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Canadian Patent Rules amended to introduce procedure for advanced examination of applications relating to green technologies and to modify existing Special Order procedure

Rules Amending the Patent Rules (SOR/2011-61) came into force on March 3, 2011, and were published on March 16, 2011. The Rules and the associated Regulatory Impact Analysis Statement may be found at:

http://www.gazette.gc.ca/rp-pr/p2/2011/2011-03-16/html/sor-dors61-eng.html

Further background information can be found on the website of the Canadian Intellectual Property Office (CIPO) at:

http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr02991.html

Section 28 of the Patent Rules has been amended to introduce a procedure for accelerating the prosecution of Canadian patent applications relating to environmental (i.e. "green") technologies.

Under the new procedure, the examination of an application shall be advanced out of its routine order if the applicant files 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 government fee is required.

The existing "Special Order" procedure is maintained, pursuant to which examination of an application shall be advanced out of its routine order on the request of any person, on payment of a government fee of CAD $500, if failure to advance the application is likely to prejudice that person's rights. In the past, Special Orders have been obtained without difficulty.

In either case, the application must be open to inspection by the public (Canadian patent applications are laid open for public inspection 18 months from the earliest priority date, or earlier upon request by the applicant) and examination must have been requested and the examination fee paid (government standard fee of CAD $800).

As amended, section 28 of the Patent Rules provides that the Commissioner of Patents shall not advance the examination of the application out of its routine order and shall return to its routine order any examination that has been advanced if, after April 30, 2011, an extension of time is granted under section 26(1) of the Patent Rules, or an application is deemed to be abandoned under section 73(1) of the Patent Act. CIPO considers that, in order to avoid application of this provision, an application that is at present abandoned must be reinstated by April 30, 2011.

Moreover, it appears that an extension of time or abandonment of the application at any time after April 30, 2011, even if years prior to the request for advanced examination, forecloses the possibility of having examination of the application advanced out of its routine order.

These restrictions concerning extensions of time and abandonment apply to both advanced examination of applications relating to green technologies and to traditional Special Order requests. Previously, once a Special Order was granted, it would remain in effect for the duration of prosecution of the application.

On the other hand, these restrictions do not apply to applications that have been abandoned or that have benefitted from time extensions when the request for advanced examination comes from a third party. However, this could occur only in the case of a regular Special Order request, because only the applicant may request advanced examination of a "green technology" application.

There are a number of reasons that an extension of time might be obtained, or that an application could become abandoned.

For instance, an extension of time might be granted to complete filing formalities. Importantly, CIPO indicates that the term for responding to an Examiner's report on a Special Order case will be three months, rather than the usual six months. A three-month extension of time may be available, but would result in loss of Special Order status.

Typical reasons that an application might become abandoned include failure to respond to an Examiner's report or failure to pay a maintenance fee. An abandoned application may be reinstated within 12 months of the date of abandonment by making a request for reinstatement, paying a CAD $200 reinstatement fee, and taking the action that should have been taken to avoid abandonment (e.g. filing the missed response to the Examiner's report).

In order to preserve advanced examination status (or the opportunity to obtain it in the future), it will be necessary for applicants to take care that extensions of time are not obtained and that an application does not become abandoned, even if it is subsequently reinstated. Once a Special Order is requested, applicants must be prepared to respond to Examiner's reports within a shortened three month term. Accordingly, an application should be placed in good order, and a clear prosecution strategy developed, before requesting a Special Order.

For further information, please contact David E. Schwartz in our Ottawa office.

 

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