This article is the second in a series on expediting patent applications (see the first article on Europe). The content was contributed by Patricia Folkins, a partner and the head of the Chemical practice group at inovia agent firm Bereskin & Parr.
Options for speeding up examination/grant of patent applications in Canada
There are three ways in which examination of a patent application can be sped up in Canada:
First, a request for Special Order Status can be filed at the Canadian Patent Office either along with a Request for Examination or after the Request for Examination has been submitted. The applicant must be published (laid open) prior to requesting Special Order Status. A government fee of CDN $500 must be paid and a statement must be made that failure to advance, the application is likely to prejudice the applicant’s rights. A third party may request Special Order Status on behalf of an applicant.
Second, a request for expediting examination of an application relating to environment (i.e. green) technology can now be made. No additional government fee is required for expediting examination of a green technology application. The rules require that the application be laid open to public inspection (published) and the applicant must make the request for expedited examination, along with a declaration that the application relates to technology — the commercialization of which would help to resolve or mitigate environmental impacts or conserve the natural environment and resources.
Third, the applicant can take advantage of the Patent Prosecution Highway (PPH). Canada has PPH agreements with the U.S., Japan, Denmark, Germany, Israel, Korea, Finland, Spain and the U.K. Further, Canada has PCT-PPH programs for PCT applications examined by CIPO and the USPTO (read more about the Patent Prosecution Highway on our blog).
How much faster might a patent grant if sped up in this way?
The Canadian Intellectual Property Office (CIPO) indicates that applications that have received Special Order Status should receive an Examiner’s Report within two months; a reply to which shall be due within three months from the Examiner’s Report.
What are the costs?
As noted above, the cost is CDN $500 for Special Order Request. PPH and Green technology requests are free.
Are there any pitfalls or difficulties?
Applications that become abandoned or for which extensions of time are requested lose their Special Order Status.
A PPH request must be based on allowable or allowed claims from one of the jurisdictions with which CIPO has an agreement. If the claims allowed in that jurisdiction do not cover all of the subject matter that the applicant wishes to claim in Canada (for example, due to a restriction requirement), then the PPH is not recommended in Canada. CIPO will allow only one patent to issue for each invention. Obviousness-type double patenting objections can be raised and CIPO does not allow the filing of terminal disclaimers. It is best to seek all claims in a single application.
This post is not legal advice. If you’re interested in expediting prosecution and grant of your Canadian application (or any application, for that matter), you should get advice from the local patent attorney in that country. They can give you specific advice tailored to your situation and commercial intentions.