Thursday, April 21, 2011

IMPORTANT NOTICE: Expedited Examination Eligibility

Thursday, April 21, 2011

Expedited Examination: Deadline to Request Reinstatement of Abandoned Applications

As noted in our newsflash of March 18, 2011, amendments to the Canadian Patent Rules relating to expedited examination of patent applications came into force on March 3, 2011. These amendments include:

  • New Subsection 28(2), which states that 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 if, after April 30th 2011, the Commissioner must extend the time fixed for doing anything or if the application has been deemed abandoned in accordance with Subsection 73(1) of the Patent Act.

In view of these amendments, the Canadian Intellectual Property Office (CIPO) has indicated that in order to preserve an application’s eligibility for expedited examination, an applicant whose patent application is currently abandoned must take the necessary steps to reinstate the application on or before April 30, 2011.

Accordingly, should any of your Canadian applications currently be abandoned and you wish to retain the option of requesting expedited prosecution in the future, these applications should be reinstated prior to the April 30, 2011 deadline. Should you wish for us to review the Canadian applications that we are currently handling on your behalf in order to determine whether any of these applications are presently abandoned and should be considered for reinstatement prior to the April 30th deadline, please contact us as soon as possible.

Expedited Examination: Shortened Time Limit for Responding to Office Actions

In a notice issued on April 14, 2011, the CIPO has advised that, in line with the objectives of expedited examination and in accordance with Paragraph 73(1)(a) of the Patent Act, the Commissioner has established a time limit of three (3) months to respond to an Examiner’s Requisition (Office Action) for those patent applications benefitting from expedited examination under Section 28 of the Patent Rules.

This time limit is considerably shorter than the 6 months currently provided and it should be noted that, in light of the above-noted amendments to the Patent Rules, either requesting an extension or allowing the application to go abandoned with subsequent reinstatement, will result in the loss of expedited status. Applicants with patent applications currently benefitting from the expedited examination procedure in Canada will, therefore, need to be prepared to respond promptly to Office Actions issued by the CIPO.