In the Rules Amending the Patent Rules (SOR/2011-61),
which came into force on March 3, 2011, CIPO has introduced changes
that modify the sections of the Patent Rules which deal with
accelerated examination. In particular, there is a new provision
regarding the accelerated examination of "green"
technologies, and a new restriction affecting the accelerated
examination of certain cases that becomes effective after April 30,
New Provision for "Green"
The amendment introduces a provision allowing applicants to
request that examination be expedited by submitting a declaration
"that the application relates to technology the
commercialization of which would help to resolve or mitigate
environmental impacts or to conserve the natural environment and
resources." No government fee is required.
The existing provisions for obtaining a "Special
Order" to expedite examination are maintained. As such, upon
payment of a fee, a request may still be made for the Commissioner
to advance the examination of an application by indicating that
failure to advance the application is likely to prejudice the
Since no government fee is required under the new Special Order
provision, these changes will be of interest to applicants working
in the area of "green" technologies. However, due to the
lack of guidance on what would constitute a technology that
"would help to resolve or mitigate environmental impacts or to
conserve the natural environment and resources," we advise
using this provision only after careful consideration to avoid
making any false declaration. If an applicant is not certain they
would satisfy this criterion, accelerated examination would be best
pursued through the pre-existing procedure with payment of the
New Restrictions Barring a Special Order
After April 30, 2011, the Commissioner will not advance an
application for examination out of its routine order, and will
return to its routine order any application that has been advanced
should the applicant cause delay during the prosecution. In
particular, the Commissioner will not grant, or will remove, a
Special Order if the applicant had requested an extension of time
under subsection 26(1) of the Rules or if the application has been
abandoned and subsequently re-instated. These restrictions apply to
Special Order requests made under either the new or the
With the enactment of these Rules changes, CIPO has also
announced that it will be setting new service standards to speed up
the prosecution of all patent applications that benefit from
expedited examination. According to the announcement, a substantive
office action will now be issued within two months following
receipt of an applicant's request or response, and a response
from the applicant will be required within three months from the
date of the examiner's report.
Considering these changes to the Patent Rules, it is now
especially important to avoid using extensions and to prevent
abandonment whenever possible to ensure that expedited examination
The RulesAmending the Patent Rules and
associated Regulatory Impact Analysis Statement can be
found here. Additional details on the new service standards
can be found here.
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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