• The Hare or the Tortoise? Options  for Speeding Up Patent Prosectution in Canada
  • August 6, 2013 | Author: Alaka Chatterjee
  • Law Firm: Borden Ladner Gervais LLP - Vancouver Office
  • Timelines for patent prosecution in Canada can vary greatly depending on the technology area, backlogs in the Canadian Intellectual Property Office (CIPO), etc. Furthermore, in Canada, substantive examination is not automatic. A specific request for examination must be made within five years from the Canadian filing date, after which it can easily take two or more years for the first Office Action to issue. While these long delays permit applicants to defer patent costs and also conduct patent prosecution in Canada in light of prosecution in corresponding applications in, for example, Europe and the U.S.A., it may be advantageous for some applicants to pursue a quick patent grant in Canada.

    Fortunately, Canada offers multiple alternative pathways by which prosecution can be expedited. The first option for expediting prosecution in Canada is to request that the application be advanced out of its regular order for examination - commonly known as a “special order” request. Special order can be requested by stating that failure to do is likely to prejudice the applicant’s rights and paying the prescribed fee, currently set at $500 CAD. This option is however limited in that applications that have been abandoned and reinstated after April 30, 2011, or that have been granted an extension of time for any reason, are ineligible.

    In addition, CIPO has recently instituted an accelerated examination option for applications relating to environmental or “green” technologies, defined as “technology the commercialization of which would help to resolve or mitigate environmental impacts or to conserve the natural environment and resources.” For entry into the green technology program, the applicant must submit a Declaration attesting that their application relates to green technology. CIPO will not verify the content of the Declaration and, as this is a recent program, the definition of the green technology has not been tested; this option is therefore not recommended if there is any doubt as to whether or not the subject matter of the application would fall under the above definition of green technologies. There is no additional government fee for this option. As with special order requests, applications that have been abandoned and reinstated after April 30, 2011, or that have been granted an extension of time for any reason, are not eligible for entry into the green technology program.

    A third option for accelerating examination in Canada, based on claims allowed or issued by another patent office, is the Patent Prosecution Highway (PPH) program. Canada has established PPH programs with a number of patent offices worldwide, including the U.S.A. Entry into the Canada-U.S.A. PPH program can be requested by conforming the claims of a Canadian application to those allowed or issued by the USPTO in a corresponding application. As with green technology applications, there is no additional government fee for PPH requests. An advantage of the PPH program is that, unlike requests for special order or under the green technology program, PPH request are not subject to the limitations relating to abandonment and reinstatement. Accordingly, even if an application has been abandoned and reinstated at any time, it will still be eligible for entry into the PPH program, provided the other requirements are met. Applicants interested in the PPH program should however take into consideration the significant differences between the unity of invention requirements in Canada and restriction practice in the U.S.A. before requesting entry into the program.

    All the accelerated examination options require that the subject application must have been published and examination must have been requested. If not, a request for publication and for examination must be made together with the request for accelerated examination.

    There are therefore multiple alternative options for speeding up examination in Canada. Each has advantages (and potential traps) but, used strategically, can be combined as part of a multi-jurisdictional strategy.