EXPEDITING EXAMINATION IN CANADA - CHOOSING A PATH

EXPEDITING EXAMINATION IN CANADA - CHOOSING A PATH
Claire Palmer, June 2012

There are currently three options available in Canada by which an Applicant can expedite issuance of a patent.  These options are (i) the Patent Prosecution Highway (PPH) Program between the Canadian Intellectual Property Office (CIPO) and various foreign patent offices; (ii) requesting expedited examination under Section 28(1)(a) of the Patent Rules and (iii) requesting expedited examination for green technologies. Each of these options is described below in more detail.

Patent Prosecution Highway (PPH)
The PPH allows for an Applicant to, in effect, leverage the prosecution that has occurred in a cooperating patent office to expedite examination of the corresponding Canadian patent application.  In particular, the PPH program allows a Canadian patent application that meets certain criteria to be advanced out of turn for examination if there at least one corresponding application in a foreign patent office that Canada has a PPH program with that has one or more claims that were found to be allowable.

The Canadian Intellectual Property Office currently has PPH agreements with:

•    Danish Patent and Trademark Office (pilot ending September 30, 2013)
•    German Patent and Trade Mark Office (pilot ending September 30, 2012)
•    Japan Patent Office (pilot ending September 30, 2013)
•    Korean Intellectual Property Office (pilot ending September 30, 2013)
•    National Board of Patents and Registration of Finland (pilot ending September 30, 2012)
•    Spanish Patent and Trademark Office (pilot ending September 30, 2012)
•    United States Patent and Trademark Office (indeterminate)
•    United Kingdom Intellectual Property Office (pilot ending January 30, 2014)

In order to take advantage of the PPH program:

A)    The Canadian patent application and the foreign patent application(s) forming the basis of the PPH request must be corresponding patent applications. More than one foreign patent application may form the basis of the PPH request (see http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03095.html)

B)    One or more claims of the corresponding foreign application(s) have been deemed allowable.

C)    All claims on file in the Canadian application, as originally filed or as amended, for accelerated examination under the PPH program sufficiently correspond (i.e. be of the same or similar scope) to one or more of the claims indicated as allowable by the foreign patent office.

D)    The Canadian application is open to public inspection.

E)    A request for examination of the Canadian application has been made, but examination of the application has not yet begun (i.e.  a first Office Action has not yet issued).
It is our experience that filing of a PPH request significantly expedites allowance of the Canadian application.  Accordingly, if the allowed claim scope of the foreign application(s) forming the basis of the PPH request is sufficient to meet the Applicant’s business needs in Canada the filing of a PPH request is an attractive option for both expediting allowance and reducing overall patent prosecution costs.  If however the foreign application(s) only represent a portion of the desired subject matter filing of a PPH request is likely not the best option.  This is particularly relevant in view of differences in unity of invention or restriction requirement practices between the CIPO and foreign office especially when Canadian “double patenting” standards are taken into account.  
This issue is of particular concern where the foreign patent application(s) forming the basis of the PPH request are U.S. applications. It is our experience that the USPTO restrict subject matter that the CIPO regard as being linked by a single inventive concept.   

With reference to the Figure above, if the allowed application in Figure A forms the basis of a PPH request in Canada, it would be necessary to pursue the subject matter of the pending U.S. divisional application in a separate Canadian application if the Applicant wished to maintain this subject matter in Canada.  There is however a significant risk that any Canadian divisional application would be rejected for “double patenting” unless it can be established that the divisional application is directed to patentably distinct subject matter. As the Canadian standards of unity generally correspond to the PCT standards, a review of the International Examiner’s assessment of unity of invention may provide some indication of what the assessment of unity will be in Canada.  Nevertheless, if the subject matter of the pending divisional U.S. application is critical the best option would likely be to pursue the subject matter of both the allowed U.S. application and the pending divisional U.S. application in a single Canadian application and forego the PPH.

With reference to Figure B, both the allowed U.S. application and allowed divisional U.S. application could form the basis of a PPH request for a single Canadian application.  In such a situation the claims of the Canadian application could be amended to include the claims of both allowed U.S. applications. If the Examiner finds a lack of unity between the claims originating from the allowed US application and the allowed divisional US application, an office action will issue otherwise the subject matter of both U.S. applications will proceed in a single Canadian application.    

There are other instances where jumping ahead of the examination queue under the PPH program may not be in the Applicant’s best interest including were the jurisprudence or laws in the foreign jurisdiction are more restrictive or counter to those in Canada.  This may be particularly relevant when one considers what constitutes patentable subject matter and support requirements in Canada versus the other PPH jurisdictions.  

Accordingly, there may be significant value to a Canadian application if one can afford the time to prosecute the application based on broader claims that may have been previously cancelled or withdrawn during foreign prosecution. These claim strategy options are not available for a patent application being examined under the PPH program.

Expedited Examination under Section 28(1)(a) of the Patent Rules

A second route by which an Applicant may expedite examination of a Canadian Patent Application is to file a request under Section 28(1)(a) of the Patent Rules. Under Section 28(1)(a) of the Patent Rules, the Commissioner shall advance out of its routine order the examination of the application on the request of (a) any person, on payment of the fee if failure to advance the application is likely to prejudice that person’s rights.

An application is not eligible for expedite examination if, after April 30, 2011, an extension of time is requested or the application is deemed to be abandoned under Subsection 73(1) of the Patent Act. (See http://www.mbm.com/contact-us/19-news/news-archives/2011/140-newsflash-important-notice-expedited-examination-eligibility).  Accordingly, if a request for an extension of time is filed or the application is deemed to be abandoned under Subsection 73(1) it will be return to ordinary examination.

Expedited Examination of Green Technologies

There is also the option of requesting expedited examination for Green technologies. Please note that there is no fee associated with this but a declaration that states the application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or conserve the natural environment and resources is required. Also applications which use this option are specifically listed on the Canadian Patent Office website. Currently, 52 applications are listed as taking advantage of this program.