According to the Canadian Intellectual Property Office (CIPO), it takes 2 or more years for examination to begin following the filing of a request. The actual pending time will vary based on the particular area of a patent application, therefore, applicants should be aware of two procedures that are available to expedite the examination process.
Under Rule 28, upon request the Commissioner may expedite examination where the failure to advance the application is likely to prejudice the Applicant's rights.
It is possible to obtain advanced examination after the application is open to public inspection and a request for examination has been filed. If needed, early publication of an application is available so that advanced examination may be requested prior to the standard 18-month publication date.
In practical terms, an applicant who wishes to take advantage of advanced examination simply has to:
- File a request with CIPO stating that failure to advance the application would likely result in prejudice to the applicant's rights; and
- Pay the prescribed government fee.
Patent Prosecution Highway
The Patent Prosecution Highway (PPH) is a pilot project conducted in collaboration with the United States Patent and Trademark Office (USPTO). Under the PPH, a Canadian patent applicant may request accelerated examination if the Canadian application claims priority from a US application for which corresponding claims have been found allowable by the USPTO and the US application is the first filed application. If the claims of both applications do not already correspond, it is possible to amend the claims of the Canadian application concurrently with the filing of a request for accelerated examination under the PPH program so that the claims on file in the Canadian application substantially correspond to the allowed claims of the US application
The one-year pilot phase of the PPH program ends January 28, 2009, unless it is extended. There is no government fee for filing a PPH request during the pilot phase. However, professional fees will be incurred both for making the request and for filing any necessary amendments.
Requesting advanced examination under Rule 28 should reduce the time for receiving a first action to several months after the request under Rule 28 has been granted. Consideration of the request itself also typically takes about two months.
Under the PPH program, the goal of the Canadian Intellectual Property Office is to send a first action (notice of allowance or examiner's report) within 3 months of receiving a request. Hence, the time to receive a first action under the Rule 28 procedure of the PPH should be similar. However, considering that the claims of a Canadian application in the PPH program must be substantially the same as claims that have already been allowed by the USPTO, it may be expected that applications are likely to be allowed most quickly with the PPH program.
It should be noted that under the PPH, where claims match those allowed by the USPTO, Canadian applications might face examination reports for defects in the description or other informalities. Common defects include statements that purport to incorporate another document by reference and references to documents that are not available to the public. Users of the PPH program should therefore review the application as a whole and correct any informalities to avoid delays.