Saturday, March 19, 2011

Newsflash | Changes to Expedited Examination in Canada

Saturday, March 19, 2011
Changes relating to Expedited Examination in Canada came into force on March 3, 2011. These changes include:

1. Under current provisions to request examination, the Commissioner may advance an application for examination upon payment of a fee if the Commissioner determines that failure to advance the application is likely to prejudice the requester’s rights. A new provision has been added which allows the Commissioner to expedite the prosecution of an application when the invention is related to green technology. Under this new provision no additional fee is required. Rather, a declaration stating that the application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or conserve the natural environment and resources along with the request for expedited examination must be submitted. As there is limited guidance with respect to what constitutes green technology, should you be uncertain whether your technology is a green technology we recommend filing the request for expedited examination under the other existing provision available in order to avoid making a false declaration and triggering the possible consequences that may flow from this.

2. A restriction on the eligibility for expedited examination has also been introduced. In particular, new Section 28(2) states:

With respect to a request made under subsection (1) by an applicant, the Commissioner shall not advance the examination of the application out of its routine order and shall return to its routine order any examination that has been advanced if, after April 30, 2011,

(a) the Commissioner extends, under subsection 26(1), the time fixed by these Rules or by the Commissioner under the Act for doing anything in respect of the application; or

(b) the application is deemed to be abandoned under subsection 73(1) of the Act whether or not it is reinstated under subsection 73(3) of the Act.

Given this new restriction, should expediting allowance of an application be a priority to you, requests for extension of time or the abandonment of the application should be avoided.