In response to the increased public interest in the patenting
and commercialization of so-called "green" technologies
in Canada, the Patent Rules have been amended to permit
free expedited examination of patent applications directed to
subject matter in this burgeoning sector These amendments came into
force March 3, 2011
Expedited examination of patent applications in Canada can be
requested by any person on payment of a fee (currently CA$500) if
failure to advance the application is likely to prejudice the
rights of that person. With the recent amendments to the Patent
Rules, an applicant of a patent application directed to a
green technology can now request expedited examination of their
application without being required to pay the fee. Instead, the
applicant is only required to file a Declaration indicating that
their application relates to "technology the commercialization
of which would help to resolve or mitigate environmental impacts or
to conserve the natural environment and resources." The Patent
Office will not consider the accuracy of the Declaration; rather,
it is the applicant's responsibility to ensure it is
Third parties will continue to have the opportunity to request
expedited examination of a patent application. However, the
above-noted fee exemption will not apply.
The present amendments also add a further restriction for
expedited examination. As previously, expedited examination can
only be granted on applications for which a request for examination
has already been filed. With the present amendments, expedited
examination will also only be granted and maintained on those
applications which are not abandoned after April 30, 2011 (even if
they are reinstated) and for which no extensions of time have been
obtained after April 30, 2011. This new restriction does not apply
to applications for which expedited examination has been granted
based on a third party request.
With the addition of this restriction to expedited examination,
it is important for applicants to avoid abandonment or requests for
extension of time, in order to preserve their ability to seek and
maintain expedited examination. Furthermore, to preserve our
clients' eligibility for expedited examination, Osler will be
taking steps to identify any currently abandoned applications, and
reinstate those that are still of interest to our clients, prior to
April 30, 2011.
The present amendments to the Patent Rules are intended
to assist small- and medium-sized businesses in rapidly developing
a clean energy economy, consistent with the Government of
Canada's priorities on science and technology. These amendments
are further intended to eliminate undue delays that undermine the
objectives of the expedited examination process.
David Barrans is a Registered Patent Agent with
the Canadian Intellectual Property Office, and with the United
States Patent and Trademark Office (on behalf of Canadian
inventors). Stephanie White is a Registered Patent
Agent with the Canadian Patent Office and with the United States
Patent and Trademark Office.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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