Originally published in Blakes Bulletin on Intellectual
Property, April 2011
Amendments to the Canadian Patent Rules, which took
effect in March 2011, will enable the expedited examination of
patent applications related to "green technology." In
some cases, applicants must preserve rights to seek accelerated
examination of current applications by April 30, 2011.
The term "green technology" is not defined in the
rules. Instead, they state that, in order to expedite examination,
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" is required.
Non-limiting examples of green technology sectors include
biofuels and bioenergy, power generation, energy infrastructure,
advanced materials, process efficiency and abatement, remediation,
transportation, recycling and waste, water, and wastewater.
The new rules provide that the Commissioner of Patents may
expedite the prosecution of a patent application when the invention
is related to green technology without payment of the government
fee usually required for accelerated prosecution.
To expedite the examination of such an application, the
applicant must request advanced examination, declare that the
application relates to "green technology," and request
that the application be laid open for public inspection.
By accelerating examination, an applicant may expect to receive
a first office action from the Canadian Intellectual Property
Office (CIPO) within three to six months. This is in contrast to
the typical wait of 18 months to three years, from the time when a
request for examination is filed, for applications examined in the
During accelerated examination, the time limit to respond to an
examiner's office action is three months. This reduced time
limit, compared to the standard six-month time limit, has been
established to allow the CIPO to further expedite the prosecution
of these patent applications. The CIPO's new service standard
further includes providing a response to an applicant's
correspondence within two months.
The amendments also eliminate undue delays that are contrary to
the objectives of the accelerated examination provision. 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 for
examination should the applicant cause any delay to occur during
the prosecution. Examples of delay include allowing the application
to be deemed abandoned or requesting that the Commissioner extend a
Therefore, an applicant who has a currently abandoned
application must request reinstatement of the abandoned application
by April 30, 2011, if it wishes to preserve eligibility for
The Canadian government's position is that fast-tracking
green technology patent applications is for the public benefit and
is aligned with other priorities on science and technology. The
government has stated that this approach supports the growth of
small- and medium-sized enterprises, develops a clean energy
economy, and is responsive to global warming.
Other countries that expedite the examination of green
technology patent applications include Australia, Japan, South
Korea, the United Kingdom, and the United States. Notably, the U.S.
has a Green Technology Pilot Program that ends December 31, 2011.
This program is limited to the first 3,000 grantable petitions to
expedite examination. As of April 4, 2011, a total of 1,595
petitions have been granted and 310 petitions are currently
awaiting a decision. Not all petitions have been granted. In fact,
approximately 40% of petitions are dismissed or denied.
The new green technology provisions in Canada may provide an
alternative expedited route in the U.S. by taking advantage of the
Patent Prosecution Highway (PPH) program. The PPH program is an
initiative between patent offices of different countries to speed
up the examination of applications filed therein by allowing
examiners in one patent office to reference examination results in
another. Such a program exists between Canada and the U.S. and may
be extended to other countries.
The PPH program expedites the prosecution of a patent
application in a second country after allowance in a first country.
Therefore, by expediting examination of a Canadian patent
application to obtain early allowance, the PPH program may then be
used to expedite prosecution of a corresponding U.S. patent
application. Certain conditions and requirements must be met in
order to qualify under the PPH.
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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