Amendments to section 28 of the Patent Rules governing
accelerated examination came into force on March 3, 2011.
Canada has traditionally provided applicants with a relatively
simple and inexpensive means to expedite examination of a patent
application. Under the previous rules, any person could request the
commissioner to accelerate the examination of an application as
long as: 1) failure to advance examination was likely to prejudice
that person's rights; 2) the application was laid open to the
public; and 3) the prescribed fee was paid.
Now, an additional requirement for accelerating examination has
been added. Under new subsection 28(2) of the Patent
Rules, the commissioner will not accelerate the examination of
any application if, after April 30, 2011, the following occurs:
An extension of time is taken to respond to a deadline set by
the commissioner, for any action; or
The application is deemed to be abandoned, whether or not it is
Any application whose examination is accelerated will be
returned to the routine order of examination if one of the above
events occurs, regardless of whether the request for accelerated
examination was made before or after the effective date for these
Importantly, the new rules apply not only to currently pending
applications, but also to applications currently deemed abandoned.
Any applicant who wishes to preserve the right to
accelerate examination of a currently abandoned application must
reinstate the application on or before April 30,
2011. Any abandoned application that is not reinstated
on or before April 30, 2011, will lose eligibility for accelerated
The new rules mean that any request for extension of time, for
any action or any abandonment of an application, even if temporary,
will result in loss of eligibility for accelerated examination.
Applicants will need to carefully consider this consequence when
deciding whether to request an extension of time or allow an
application to go abandoned.
An exception to the above allows accelerated examination to
still be considered for applications that have been abandoned or
have benefited from time extensions when the request for
accelerated examination comes from a third party.
On the positive side for applicants, the patent office has
instituted new standards for accelerated examination which promise
to significantly expedite the examination procedure. Under the new
standards, the office should provide a substantive response to
correspondence from the applicant within two months of receipt. In
turn, applicants will be given a shortened three-month period for
reply to an office action.
Subject to the above requirements, the new rules also enable
expedited examination of applications relating to green
technologies (see our July 2010 Bulletin). Applicants may now request
expedited examination by filing a declaration "indicating 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 fee is
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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