IP NEWS

Canadian Patent Rules amendments relating to green technology applications and applications under Special Order

01/04/2011

Recently, the provisions of the Canadian Patent Rules relating to applications under Special Order for expedited examination were amended. In summary, the amendments: (1) provide for expediting examination, without any additional Government fee, for an application relating to green technology; (2) retain the existing procedure for expediting examination of an application under Special Order, with the payment of a Government fee ; and (3) require that by April 30, 2011, a provisionally abandoned application must be reinstated and that after April 30, 2011, an application must not be allowed to be abandoned nor an extension of time be availed, if the Applicant wishes to request or maintain expedited examination.

The amended Rules1 came into force on March 3, 2011, and were published on March 16, 2011.

The amended Rules provide for expediting examination of an application relating to environmental (i.e. green) technology. No additional Government fee is required for expediting examination of a green technology application. The amended Rules require that the application be open to public inspection, and the applicant must make the request for expedited examination, along with a declaration 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.

The existing procedure for expedited examination of an application under Special Order is retained in the amended Rules. Under this procedure, any person may request expedited examination, if failure to advance the application is likely to prejudice that person’s rights. In addition, the application must be laid open and a Government fee must be paid.

Further, the amended Rules provide that the Commissioner shall not expedite examination of an application and shall return to its routine order any application that has been advanced if, after April 30, 2011, an extension of time is granted by the Commissioner under section 26(1) of the Patent Rules, or if the application is deemed to be abandoned under section 73(1) of the Patent Rules, even if it is subsequently reinstated. These restrictions apply to all applications for which a Special Order for expedited examination has already been granted, and to all applications for which expedited examination may be requested in the future. Hence, any provisionally abandoned application must be reinstated by April 30, 2011, if the Applicant wishes to request or maintain expedited examination. Further, after April 30, 2011, a grant for an extension of time from the Commissioner should not be requested, nor should an application be abandoned, if the Applicant wishes to request or maintain expedited examination.

The Canadian Intellectual Property Office (CIPO) indicates that applications that have received Special Order status should receive an Examiner’s Report within two months; a reply to which shall be due within three months from the Examiner’s Report.

For additional information on CIPO’s notice relating to expedited examination, please see:

http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr02462.html;

The Rules Amending the Patent Rules, which were published in the Canada Gazette Part II on March 16, 2011, along with the regulatory impact analysis statement, can be found at:
http://www.gazette.gc.ca/rp-pr/p2/2011/2011-03-16/html/sor-dors61-eng.html.

For further information, please do not hesitate to contact Kazim Agha at kagha@ridoutmaybee.com, or Roland H. Joachim at rjoachim@ridoutmaybee.com.


Disclaimer

This Notice is intended to be an update of Canadian patent law. The content of this Notice is for informational purposes only and does not constitute legal or professional advice.


1 Amended section 28 of the Canadian Patent Rules reads as follows:

  1. (1) In respect of an application that has a filing date on or after October 1, 1989 and that is open to public inspection under section 10 of the Act, the Commissioner shall advance out of its routine order the examination of the application under subsection 35(1) of the Act on the request of

(a) any person, on payment of the fee set out in item 4 of Schedule II, if failure to advance the application is likely to prejudice that person’s rights; or

(b) the applicant, if the applicant files with the Commissioner 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.

(2) With respect to a request made under subsection (1) by an applicant, the Commissioner shall not advance the examination of the application out of its routine order and shall return to its routine order any examination that has been advanced if, after April 30, 2011,

(a) the Commissioner extends, under subsection 26(1), the time fixed by these Rules or by the Commissioner under the Act for doing anything in respect of the application; or

(b) the application is deemed to be abandoned under subsection 73(1) of the Act whether or not it is reinstated under subsection 73(3) of the Act.

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