Amendments to section 28 of the Patent Rules governing accelerated examination came into force on March 3, 2011.
Canada has traditionally provided applicants with a relatively simple and inexpensive means to expedite examination of a patent application. Under the previous rules, any person could request the commissioner to accelerate the examination of an application as long as: 1) failure to advance examination was likely to prejudice that person's rights; 2) the application was laid open to the public; and 3) the prescribed fee was paid.
Now, an additional requirement for accelerating examination has been added. Under new subsection 28(2) of the Patent Rules, the commissioner will not accelerate the examination of any application if, after April 30, 2011, the following occurs:
- An extension of time is taken to respond to a deadline set by the commissioner, for any action; or
- The application is deemed to be abandoned, whether or not it is subsequently reinstated.
Any application whose examination is accelerated will be returned to the routine order of examination if one of the above events occurs, regardless of whether the request for accelerated examination was made before or after the effective date for these new rules.
Importantly, the new rules apply not only to currently pending applications, but also to applications currently deemed abandoned. Any applicant who wishes to preserve the right to accelerate examination of a currently abandoned application must reinstate the application on or before April 30, 2011. Any abandoned application that is not reinstated on or before April 30, 2011, will lose eligibility for accelerated examination.
The new rules mean that any request for extension of time, for any action or any abandonment of an application, even if temporary, will result in loss of eligibility for accelerated examination. Applicants will need to carefully consider this consequence when deciding whether to request an extension of time or allow an application to go abandoned.
An exception to the above allows accelerated examination to still be considered for applications that have been abandoned or have benefited from time extensions when the request for accelerated examination comes from a third party.
On the positive side for applicants, the patent office has instituted new standards for accelerated examination which promise to significantly expedite the examination procedure. Under the new standards, the office should provide a substantive response to correspondence from the applicant within two months of receipt. In turn, applicants will be given a shortened three-month period for reply to an office action.
Subject to the above requirements, the new rules also enable expedited examination of applications relating to green technologies (see our July 2010 Bulletin). Applicants may now request expedited examination by filing 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 fee is required.