Green Patents: Coming into effect - Qs and As

Introduction

The Rules Amending the Patent Rules were published in Part II of the Canada Gazette on March 16, 2011.

The amendments accomplish the following:

  • expand the criteria of eligibility for advanced examination to applications that relate to a field of green technology; and
  • accelerate the overall process of advanced examination by encouraging applicants to avoid any undue delays during prosecution.

Why were the Patent Rules (herein after "Rules") amended?

The Rules were amended to offer the possibility to accelerate the prosecution of patent applications relating to environmental (green) technologies within the Canadian intellectual property system in order to expedite commercialization of technologies that could help to resolve or mitigate environmental impacts or to conserve the natural environment and resources.

What are the main changes to the Rules?

The main changes to the Rules are:

  1. The introduction of paragraph 28(1)(b) to require the Commissioner of Patents to expedite the prosecution of an application when the application relates to green technology whenever the applicant files the required declaration.
  2. The addition of new subsection 28(2) to provide that the Commissioner of Patents will not advance an application for examination out of its routine order and will return to its routine order any application that has been advanced for examination if, after April 30th, 2011, the Commissioner, at the request of the applicant, extends the time fixed for doing anything or if the application has been deemed abandoned in accordance with subsection 73(1) of the Patent Act.

If my application is currently deemed abandoned, will it be eligible for advanced examination?

New subsection 28(2) of the Rules provides that the Commissioner of Patents will not advance an application for examination out of its routine order and will return to its routine order any application that has been advanced for examination if, after April 30th, 2011, the application has been deemed abandoned in accordance with subsection 73(1) of the Patent Act whether or not it is reinstated under subsection 73(3) of the Act.

Accordingly, an application that is deemed abandoned before April 30th, 2011 will still be eligible for advanced examination before April 30th, 2011. However, in order to remain eligible for advanced examination after that date, the application must be reinstated before or on April 30th, 2011.

If an application is deemed abandoned at any time after April 30th, 2011, it will not be eligible for advanced examination.

If an application that has been previously granted advanced examination status is deemed abandoned after April 30th, 2011, it will be returned to regular examination order.

What will happen if my application was accorded special order status before the coming into force of the new Rules?

The new Rules govern all special orders (advanced examinations). Whether the special order status was accorded before or after the coming into force of the new rules, it will be subject to the provisions of new subsection 28(2) of the Rules.

In other words, an application that was accorded special order status before the coming into force of the new rules will be returned to regular examination order if, after April 30th 2011, the Commissioner of Patents, at the request of the applicant, extends the time fixed for doing anything or if the application is deemed abandoned in accordance with subsection 73(1) of the Patent Act.

Can the examination of an application that is deemed abandoned after April 30th, 2011 still be advanced if the request to that effect is submitted by a third party?

The restrictions introduced by new subsection 28(2) do not apply to requests for advanced examination submitted by third parties. In other words, the Commissioner of Patents may still advance the examination of an application that is deemed abandoned after April 30th, 2011 if the request for such advancement is submitted by a third party.

The following requirements must still be met:

  • the application must be open for public inspection under Section 10 of the Act;
  • examination must have been requested under subsection 35(1) of the Act; and
  • the prescribed fee must be paid; and
  • failure to advance examination must be likely to prejudice that person's rights.

What steps must be followed so that the examination of an application relating to green technology is advanced?

The applicant must submit to the Commissioner of Patents a request for advanced examination accompanied by 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.

Will the Office question the declaration from the applicant?

No. It is the applicant's responsibility to ensure the accuracy of their declaration

Will new service standards apply to all applications advanced for examination?

Yes. The following new service standard will apply to all applications advanced for examination: until a patent application is approved for allowance, a response will be provided to the applicant within two months from the date a piece of correspondence is received at CIPO. This new standard will permit acceleration of the advanced examination process.


Changes to IP Regulations: Rules Amending the Patent Rules, Expedited Examination of Patent Applications Relating to Green Technology