In the Rules Amending the Patent Rules (SOR/2011-61), which came into force on March 3, 2011, CIPO has introduced changes that modify the sections of the Patent Rules which deal with accelerated examination. In particular, there is a new provision regarding the accelerated examination of "green" technologies, and a new restriction affecting the accelerated examination of certain cases that becomes effective after April 30, 2011.
New Provision for "Green" Technologies
The amendment introduces a provision allowing applicants to request that examination be expedited by submitting 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." No government fee is required.
The existing provisions for obtaining a "Special Order" to expedite examination are maintained. As such, upon payment of a fee, a request may still be made for the Commissioner to advance the examination of an application by indicating that failure to advance the application is likely to prejudice the requester's rights.
Since no government fee is required under the new Special Order provision, these changes will be of interest to applicants working in the area of "green" technologies. However, due to the lack of guidance on what would constitute a technology that "would help to resolve or mitigate environmental impacts or to conserve the natural environment and resources," we advise using this provision only after careful consideration to avoid making any false declaration. If an applicant is not certain they would satisfy this criterion, accelerated examination would be best pursued through the pre-existing procedure with payment of the government fee.
New Restrictions Barring a Special Order
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 should the applicant cause delay during the prosecution. In particular, the Commissioner will not grant, or will remove, a Special Order if the applicant had requested an extension of time under subsection 26(1) of the Rules or if the application has been abandoned and subsequently re-instated. These restrictions apply to Special Order requests made under either the new or the pre-existing provision.
With the enactment of these Rules changes, CIPO has also announced that it will be setting new service standards to speed up the prosecution of all patent applications that benefit from expedited examination. According to the announcement, a substantive office action will now be issued within two months following receipt of an applicant's request or response, and a response from the applicant will be required within three months from the date of the examiner's report.
Considering these changes to the Patent Rules, it is now especially important to avoid using extensions and to prevent abandonment whenever possible to ensure that expedited examination remains available.
The Rules Amending the Patent Rules and associated Regulatory Impact Analysis Statement can be found here.