Canada offers a voluntary expedited prosecution program (PPH) that advances patent applications to the front of the examination queue. However, to qualify for the program, the application can only contain claims that sufficiently correspond to the claims considered allowable by another approved patent office, known as the Office of Earlier Examination (OEE). Claims sufficiently correspond to one another if they are of similar or of narrower scope, and are of the same category.
Consider a situation where the OEE is the USPTO and, due to a restriction requirement, process claims were deleted, leaving only apparatus claims. Any PPH application in Canada can only include those allowable apparatus claims. A divisional application filed to cover the process claims may be at risk of a double-patenting rejection.
Also, there are differences in how structural limitations in claims are interpreted in Canada. These differences often require the claim language in Canada to be rephrased in order to obtain the equivalent protection as in the US.
Finally, applicants must also note that there are additional claim categories available in Canada that are not available in other jurisdictions, such as “use” claims.
It may be more beneficial to request expedited examination under Section 28(1)(a) of the Patent Rules, under which examination may be advanced on the request of any person on payment of the applicable fee if failure to do so is likely to prejudice that person’s rights. This latter provision is interpreted very broadly.