In Canada, examination of applications occurs only upon request
and such a request can be deferred for up to five years from the
filing date. Once a request for examination has been made, the
application is placed in queue and is examined relative to its
order in the queue. In certain situations, an Applicant may wish to
expedite or streamline prosecution thereby reducing financial and
human resources. There are three options for requesting expedited
examination in Canada:
the Patent Prosecution Highway program;
Special Order, under paragraph 28.(1)(a) of the Patent Rules;
expedited examination of Green Technologies under paragraph
28.(1)(b) of the Patent Rules.
Patent Prosecution Highway (PPH): Now Available for European
The PPH project is an initiative aimed at expediting the patent
prosecution process, whereby a patent office in one country may
rely on the search and examination work conducted by a
participating foreign patent office indicating that a claim is
allowed or allowable. This expedited process can reduce prosecution
costs to both the patent applicant and the patent office.
The Canadian Intellectual Property Office (CIPO) has entered
into PPH agreements with patent offices in a number of foreign
countries, including the United States (US), United Kingdom,
Germany, Japan, South Korea, Denmark, Finland, and Spain. In
January 2015, CIPO entered into a new pilot agreement with the
European Patent Office. This bilateral program is based on both
nationally filed and Patent Cooperation Treaty (PCT) applications.
Once the applicant has obtained allowable claims in Europe or a
participating PPH country, a request for expedited examination
under the PPH can be filed with CIPO, provided that the Canadian
application entered the National Phase on or after January 6,
In order to enter the PPH, the Canadian claims must
"sufficiently correspond" to the allowed claims, the
application must be laid open to public inspection, and examination
must be requested. Amendment of the claims is permitted at the time
of the request and it is noted that "sufficiently
correspond" is flexibly interpreted in Canada (e.g.
"use' claims may be pursued in Canada on the basis of
allowed "method" counterparts). Importantly, the request
must be made before examination in Canada has commenced. According
to statistics released by CIPO, PPH applications have a higher
grant rate and receive fewer Office Actions than applications being
examined in the regular stream. There are no government fees
associated with entering the PPH program.
In cases where expedited examination is desired, but examination
has already commenced, it may still be possible to advance
prosecution by requesting "Special Order" under paragraph
28.(1)(a) of the Patent Rules. In order to be accepted for Special
Order status, the Applicant must pay a $500 government fee and
submit a declaration that states that failure to advance the
application is likely to prejudice the Applicant's rights.
The Canadian Patent Office requires that an application be
examined within 2 months of receiving a request for examination
under Special Order status. A response from the Applicant is
required within 3 months from the date of issuance of an
Examiner's report and an Examiner's report must be issued
within 2 months of receiving such a response.
Under the current Act and Rules, Canada has flexible abandonment
and reinstatement procedures. It should be noted that if an
application that is being prosecuted under Special Order is allowed
to go abandoned, it will lose its Special Order status. This is not
the case with applications being prosecuted under the PPH.
If an application relates to "a technology, the
commercialization of which would help to resolve or mitigate
environmental impacts or conserve the natural environment and
resources" examination may be advanced under paragraph
28.(1)(b) of the Patent Rules, by requesting advancement and
submitting a declaration. No government fee is required.
In Canada, there is an opportunity to defer examination up to 5
years from the filing date, which may be desirable in cases where
an Applicant wishes to delay examination and, consequently, defer
costs and decisions. There are several routes for expediting patent
examination in Canada and for reducing worldwide prosecution costs.
The route that an Applicant chooses will depend on the technology
and the status of prosecution of the application in Canada and
elsewhere. Borden Ladner Gervais can assist in determining an
appropriate strategy for accelerating or deferring examination of a
particular case in Canada.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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