The Canadian Intellectual Property Office (CIPO) has recently published proposed amendments to the Patent Rules to allow owners of environmentally beneficial inventions to more easily obtain expedited examination of their patent applications.
It is generally desirable to encourage the secure funding of clean technologies so that they may be brought to market more rapidly. By providing the greater certainty of granted patent rights sooner, expedited examination may aid in hastening commercialization of new technologies.
Currently, an applicant can accelerate the examination of any application upon request, payment of a fee, and declaring that failure to advance the application would prejudice the applicant’s rights. The proposed amendments would add environmental benefit as an acceptable ground for seeking expedited examination, and would in that case eliminate the corresponding fee. An applicant would be required to submit a declaration stating that their application relates to technology that could help to resolve or mitigate environmental impacts or conserve the natural environment and resources.
At the same time, in a separate and unrelated Rule amendment, CIPO proposes to exclude from the expedited examination regime applications that have been, or subsequently are, subject to delays caused by the applicant. If an applicant requests expedited examination but causes a delay in its prosecution (e.g., request for deadline extension, allowing application to be abandoned) then the application will be returned to the regular queue. Applications that have had a previous delay in prosecution will no longer be eligible subsequently to elect expedited examination.
CIPO hopes to set new standards to hasten prosecution of all patent applications subject to accelerated examination. CIPO proposes to produce an office action within two months following receipt of an applicant’s request or response. A response from the applicant will then be required within three months.
CIPO is not the only national patent office to fast-track the examination of clean technology patent applications. Other national patent offices including the US, UK, and Korea have similar initiatives (see: article Fast-Track Examination for Clean Technology Patents).