Accelerated Examination of Cleantech Applications in Canada

  On March 3, 2011, the Canadian Patent Rules were amended to introduce a procedure for expediting the prosecution of patent applications relating to "green" or "clean" technologies, without the payment of any additional fees. Under the new procedure, the applicant may advance an application out of its routine order by filing 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 amendments to the Patent Rules demonstrate Canada's commitment to a clean energy economy through support for small and medium-sized enterprises.  It is hoped that accelerating the prosecution of applications related to clean technologies will foster the creation and commercialization of technologies aimed at mitigating environmental impacts or conserving natural resources.   As with the pre-existing procedure for expediting examination of an application, the application must be open for public inspection, and examination must have been requested (with payment of the examination fee, generally $800).  Canadian patent applications are laid open for public inspection 18 months from the earliest priority date, or earlier upon request by the applicant.   Notably, applications that remain or become abandoned after April 30, 2011 will either not be eligible for expedited examination, or will be permanently returned to routine examination.   An application may become abandoned for several different reasons, including failure to:  

• reply in good faith to any requisition of an examiner within the time limit specified;
• complete the application and pay the completion fee within the time limit specified;
• pay the prescribed maintenance fees within the time limit specified; or
• request examination and pay the prescribed fee within the time limit specified.

  According to the previous rules, expedited examination, once granted, would remain in effect for the duration of prosecution of the application.    The Canadian Intellectual Property Office (CIPO) has indicated that applications granted expedited status should receive an initial Examiner’s Report within two months, with the applicant's reply due within three months.  CIPO intends to continue responding to applicants within two months from the date each correspondence is received at CIPO until the application is approved for allowance.  Accordingly, a clear prosecution strategy should be developed prior to seeking expedited examination. Obviously, this process may be open to abuse by applicants who falsely claim that their technologies would help to resolve environmental impacts.  However, CIPO's position is that the amended Rules, in conjunction with the existing legislative framework, already provide adequate tools to efficiently address this.  Moreover,  Canada's developing jurisprudence on the applicant's duty of candour should serve to deter disingenuous requests.