In response to the increased public interest in the patenting and commercialization of so-called “green” technologies in Canada, the Patent Rules have been amended to permit free expedited examination of patent applications directed to subject matter in this burgeoning sector These amendments came into force March 3, 2011

Expedited examination of patent applications in Canada can be requested by any person on payment of a fee (currently CA$500) if failure to advance the application is likely to prejudice the rights of that person. With the recent amendments to the Patent Rules, an applicant of a patent application directed to a green technology can now request expedited examination of their application without being required to pay the fee. Instead, the applicant is only required to file a Declaration indicating that their application relates to “technology the commercialization of which would help to resolve or mitigate environmental impacts or to conserve the natural environment and resources.” The Patent Office will not consider the accuracy of the Declaration; rather, it is the applicant’s responsibility to ensure it is accurate.

Third parties will continue to have the opportunity to request expedited examination of a patent application. However, the above-noted fee exemption will not apply.

The present amendments also add a further restriction for expedited examination. As previously, expedited examination can only be granted on applications for which a request for examination has already been filed. With the present amendments, expedited examination will also only be granted and maintained on those applications which are not abandoned after April 30, 2011 (even if they are reinstated) and for which no extensions of time have been obtained after April 30, 2011. This new restriction does not apply to applications for which expedited examination has been granted based on a third party request.

With the addition of this restriction to expedited examination, it is important for applicants to avoid abandonment or requests for extension of time, in order to preserve their ability to seek and maintain expedited examination. Furthermore, to preserve our clients’ eligibility for expedited examination, Osler will be taking steps to identify any currently abandoned applications, and reinstate those that are still of interest to our clients, prior to April 30, 2011.

The present amendments to the Patent Rules are intended to assist small- and medium-sized businesses in rapidly developing a clean energy economy, consistent with the Government of Canada’s priorities on science and technology. These amendments are further intended to eliminate undue delays that undermine the objectives of the expedited examination process.