Accelerated Examination of Green Technologies

Anton C. Sabeta, B.Eng. (Electrical)
Published April 12th, 2011

In the Rules Amending the Patent Rules (SOR/2011-61), which came into force on March 3, 2011, the Canadian Intellectual Property Office (CIPO) introduced a new provision that allows expedited examination of patent applications for “green” technologies without any additional government fee. By accelerating the examination of these patent applications, CIPO anticipates that this will foster investment and expedite commercialization of technologies that could help to resolve or mitigate environmental impacts or to conserve the natural environment and resources [1][2].

To take advantage of the accelerated examination of patent applications for green technologies, Applicants are required to submit:

(i) a written request to the Patent Office for expedited examination, there is no government fee required; and

(ii) a declaration that states the application relates to technology that the commercialization of which would help to resolve or mitigate environmental impacts or conserve the natural environment and resources.

The Office will not question the declaration from the Applicant, therefore, the onus is on the Applicant to ensure that the declaration is accurate. As there is no definition provided of a technology that “would help to resolve or mitigate environmental impacts or to conserve the natural environment and resources,” Applicants should use this provision only if the technology falls squarely within these parameters to avoid making any false statements in their declaration; otherwise Applicants should follow the normal procedure for expedited examination with payment of the government fee.

New service standards have also been set for all applications advanced for examination, the Office aims to issue a substantive office action within two months after receiving either the Applicant’s request for expedited examination or the Applicant’s response to the preceding office action. The Applicant’s response will be required within three months from the date of the office action.

The amendments also eliminate undue delays that are contrary to the objectives of the accelerated examination provision. After April 30, 2011, the Commissioner 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 should the Applicant cause any delay to occur during the prosecution. Examples of delay would be allowing the application to become abandoned, or requesting that the Commissioner extend a deadline.

These new rules apply to currently pending applications as well as applications currently deemed abandoned. Therefore, in order to preserve the right to accelerate examination of a currently abandoned application, that application must be reinstated on or before April 30, 2011.

                                                                           

REFERENCES

[1] “Expedited Examination of Patent Applications Related to Green Technology”: Canadian Intellectual Property Office, accessed April 7, 2011, available from the World Wide Web: <http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr02462.html>

[2] Scott Vasudev, “Rules Amending the Patent Rules (SOR/2011-61)”: Canada Gazette, Part II [online], Vol. 145, No. 6, March 16, 2011, available from the World Wide Web: <http://www.gazette.gc.ca/rp-pr/p2/2011/2011-03-16/html/sor-dors61-eng.html>