Recent amendments to the Canadian Patent Rules and
changes to Canadian Patent Office practice now provide patent
applicants with greater opportunities for expediting patent
examination before the Canadian Intellectual Property Office
In Canada, patent examination can be deferred for up to five
years from the filing date. But due to a backlog at the Patent
Office, once examination is requested, there can be a delay of
between 18-30 months and sometime longer before an application
reaches a patent examiner for substantive examination.
There are a number of ways to speed up the patent examination
process in Canada. An application can be advanced for examination
in Canada if:
a request is made for a Special Order,
the application relates to a green technology, or
if the application meets the requirements of the Patent
Prosecution Highway ("PPH") with a participating patent
The requirements for each of these procedures are summarized
A request for expedited examination cannot be made until an
application is laid open for public inspection. An application is
laid open in Canada 18 months after the earliest priority date or
the filing date if there is no priority claim. An application can
be laid open for public inspection sooner, if a request is
Once a request for expedited examination is approved by the
Patent Office, an applicant should expect to receive a first
examiner's report (or notice of allowance) within two to three
In addition to the requirements summarized above, the following
further requirements apply to advanced examination in Canada.
Special Order. If a Special Order is granted,
then examiner's reports will require a response within three
months. If for any reason an extension of time is requested, or the
application is abandoned and reinstated, then Special Order status
will be lost and the applicant will be precluded from requesting a
further Special Order. This does not apply to third parties who may
wish to request a further Special Order.
Green technology. The applicant declaration
must indicate that the invention relates to "technology the
commercialization of which would help to resolve or mitigate
environmental impacts or to conserve the natural environment and
Like Special Orders, the term for response is three months. The
consequences of abandonment are also the same as for a Special
Patent Prosecution Highway ("PPH").
The PPH permits CIPO to take advantage of search and examination
results for an application filed in a participating office. Canada
currently has a PPH agreement with the USPTO and PPH pilot projects
with the following six patent offices around the world: Japan
Patent Office ("JPO"), Korean Intellectual Property
Office ("KIPO"); Danish Patent and Trademark Office
("DKPTO"); German Patent and Trademark Office
("DPMA"); Spanish Patent and Trademark Office
("SPTO"); and National Board of Patents and Registrations
of Finland ("NBPR").
CIPO has also established a PCT-PPH pilot project for PCT
applications entering the Canadian national phase where it was the
International Searching Authority and/or International Preliminary
Examination Authority of the PCT application. The pilot is
scheduled to end January 31, 2013.
Each of the pilot programs may be extended, or terminated early.
The PPH agreement with the USPTO currently has no time limit.
Canada is a signatory to the Mottainai agreement, and so
agreements with the USPTO, JPO, SPTO and NBPR do not limit these
offices to being the office of first filing in order for the
Canadian application to benefit from their search and examination
Unlike Special Order and PPH, examiner's reports ordinarily
have a six-month term for response. Another difference is that if
an extension of time is requested, or the application is abandoned
and reinstated, the application will continue in the PPH pilot
Applications in the PPH pilot program, while expedited, will
still be examined for compliance with Canadian requirements.
Comparison with advanced examination in the
USPTO. Unlike the USPTO, there is no provision to allow
the Commissioner to order advanced examination to expedite the
business of the office, and there are no provisions that would
permit the government to advance examination of inventions relevant
to the public service.
There are no provisions for advancing examination without fee
based on the age or health of the applicant or where the invention
is directed at countering terrorism.
Finally, there are presently no other programs for advancing
examination before the Canadian Intellectual Property Office, such
as the USPTO Accelerated Examination Program.
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
informational only and does not constitute legal or professional
advice. To obtain such advice, please communicate with our offices
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Materials from a recent "refresher training" for examiners at the Canadian Intellectual Property Office (CIPO) highlight inconsistencies between CIPO's examination practices and Supreme Court precedent.
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