Patent Prosecution Highway
Comparison with advanced examination in the USPTO
Recent amendments to the Canadian Patent Rules and changes to Canadian Intellectual Property Office (CIPO) practice now provide patent applicants with greater opportunities for expediting patent examination.
In Canada, patent examination can be deferred for up to five years from the filing date. But due to a backlog at CIPO, once examination is requested, there can be a delay of between 18 and 30 months – and sometimes longer – before an application reaches a patent examiner for substantive examination.
There are a number of ways to speed up the patent examination process. An application can be advanced for examination if:
- a request is made for a special order;
- the application relates to green technology; or
- the application meets the requirements of the Patent Prosecution Highway with a participating patent office.
The requirements for each of these procedures are summarised below:
|Special order||Advanced examination: green technology||Patent Prosecution Highway|
|Government fee||Yes (C$500)||No||No|
|Timing for request||Any stage of prosecution||Any stage of prosecution||Before CIPO commences prosecution|
|Requesting party||Any person||Applicant||Applicant|
|Other requirements|| || |
Application must be and have been in good standing since April 30 2011
A request for expedited examination cannot be made until an application has been laid open for public inspection. An application is laid open 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 made.
Once CIPO has approved a request for expedited examination, an applicant should expect to receive a first examiner's report (or notice of allowance) within two to three months.
In addition to the requirements summarised above, the following further requirements apply to advanced examination.
If a special order is granted, the 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, the 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 that may wish to request a further special order.
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 resources". Like special orders, the term for response is three months. The consequences of abandonment are also the same as for special orders.
The Patent Prosecution Highway permits CIPO to take advantage of search and examination results for an application filed in a participating office. Canada currently has a Patent Prosecution Highway agreement with the US Patent and Trademark Office (USPTO) and pilot projects with the patent offices of Japan, Korea, Denmark, Germany, Spain and Finland.
CIPO has also established a Patent Prosecution Highway pilot project for Patent Cooperation Treaty applications entering the Canadian national phase where it was the international searching authority or international preliminary examination authority of the application. The pilot is scheduled to end on January 31 2013.
Each of the pilot programmes may be extended or terminated early. The agreement with the USPTO currently has no time limit.
Canada is a signatory to the Mottainai agreement, and so agreements with the patent offices of the United States, Japan, Spain and Finland 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 results.
Unlike special orders and the Patent Prosecution Highway, 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 Patent Prosecution Highway pilot programme. Applications in the pilot programme, although expedited, will still be examined for compliance with Canadian requirements.
Comparison with advanced examination in the USPTO
Unlike the USPTO, CIPO has no provision to allow the commissioner to order advanced examination to expedite the business of the office, and there are no provisions that permit the government to advance examination of inventions relevant to public services.
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 programmes for advancing examination before CIPO, such as the USPTO's Accelerated Examination Programme.
For further information on this topic please contact Daphne C Lainson at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486) or by fax (+1 613 232 8440) or by email ([email protected]).