Vol. 145, No. 6 — March 16, 2011
SOR/2011-61 March 3, 2011
ARCHIVED — Rules Amending the Patent Rules
P.C. 2011-268 March 3, 2011
His Excellency the Governor General in Council, on the recommendation of the Minister of Industry, pursuant to section 12 (see footnote a) of the Patent Act (see footnote b), hereby makes the annexed Rules Amending the Patent Rules.
RULES AMENDING THE PATENT RULES
1. Section 28 of the Patent Rules (see footnote 1) is replaced by the following:
28. (1) In respect of an application that has a filing date on or after October 1, 1989 and that is open to public inspection under section 10 of the Act, the Commissioner shall advance out of its routine order the examination of the application under subsection 35(1) of the Act on the request of
(a) any person, on payment of the fee set out in item 4 of Schedule II, if failure to advance the application is likely to prejudice that person’s rights; or
(b) the applicant, if the applicant files with the Commissioner a declaration indicating 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.
(2) 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.
2. The portion of item 4 of Schedule II to the Rules in column I is replaced by the following:
On requesting the advance of an application for examination under paragraph 28(1)(a) of these Rules....
COMING INTO FORCE
3. These Rules come into force on the day on which they are registered.
REGULATORY IMPACT ANALYSIS STATEMENT
(This statement is not part of the Rules.)
Issue and objectives
This regulatory initiative introduces amendments to the Patent Rules under the authority of the Patent Act. The Patent Act and associated regulations relate to the protection of new inventions (art, process, machine, manufacture, composition of matter) or any new and useful improvement of an existing invention.
The amendments seek to accelerate the prosecution of patent applications relating to environmental (green) technologies within the Canadian intellectual property system in order to expedite commercialization of technologies that could help to resolve or mitigate environmental impacts or to conserve the natural environment and resources (green technologies).
The amendments are constructed as a commercialization assist to patent applications. Expedited examination will have the effect of reducing the time it takes to patent these green technologies, which will enable inventors to secure funding, create businesses and bring green technology to market sooner.
The fast-tracking of green technology patent applications is being put in place for the public good, and not in response to market forces. It is in line with the Government’s priorities on science and technology, supporting the growth of small- and medium-sized businesses (SMEs), developing a clean energy economy and taking government action on global warming and capacity building.
Description and rationale
The current Patent Rules already provide authority for the Commissioner to expedite the examination of an application upon request and payment of the prescribed fee by the applicant or third party. Currently, to grant such a request, the Commissioner must determine that failure to expedite prosecution of the application is likely to prejudice the requestor’s rights.
The existing criteria in the Patent Rules will be expanded in order to provide a mechanism to accelerate the examination of patent applications relating to green technologies that could help to resolve or mitigate environmental impacts or conserve the natural environment and resources.
More detailed descriptions of the Patent Rules amendments are as follows:
(1) Advanced examination
Subsection 28(1) of the Patent Rules will be amended. Subsection 28(1) currently provides that an application can be advanced out of the routine order if the applicant or a third party requests such an advancement, declares that failure to advance the application would prejudice their rights and pays the prescribed fee.
Paragraph 28(1)(b) will be added to provide that the Commissioner may also expedite the prosecution of an application when the invention is related to green technology. Specifically, paragraph 28(1)(b) will indicate that prosecution of an application may be expedited by filing a request and making a declaration that states 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 additional fee for expedited examinations under the prejudice provision will not be applied to applications relating to green technology.
As is currently the case, advanced examination will only apply if a request for examination has been made pursuant to subsection 35(1) of the Patent Act.
(2) Restrictions for Advanced Examination
Subsection 28(2), which limits the application of subsection 28(1) to applications with respect to which a request for examination has been made pursuant to subsection 35(1) of the Patent Act, will be incorporated into amended subsection 28(1).
A new subsection 28(2) will be added to provide 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 the Commissioner must extend the time fixed for doing anything or if the application has at any time been deemed abandoned in accordance with subsection 73(1) or (2) of the Patent Act.
The Patent Act provides that applications can become abandoned if an applicant fails to take a required action on an application within the prescribed time period. An application may become abandoned for a number of reasons, including, but not limited to, the 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.
When an application becomes abandoned, the applicant may reinstate the application within 12 months of the date the application was deemed abandoned by making a request for reinstatement, taking the action that should have been taken in order to avoid the abandonment, and paying the fee set out in Item 7, Part I of Schedule II of the Patent Rules, namely $200.00.
The objective of an expedited prosecution is to accelerate the rate at which an application proceeds through prosecution and examination. The abandonment and reinstatement process, which allows for a 12-month delay within the prosecution period, is contrary to the objectives of the accelerated prosecution provision, and it was determined that applications which become abandoned should not be entitled to the benefits associated with expediting examination.
Expedited examination will still be considered for applications that have been abandoned or that have benefited from time extensions when the request for advanced examination comes from a third party.
Benefits and costs
Based on the uptake experience in other countries which have implemented similar processes, and given that approximately only 2% of CIPO clients now avail themselves of the current special order provisions, these amendments do not require the allocation of additional resources toward administering Canada’s patent system. Existing CIPO resources will be used to support the initiative and thus the benefits will be conferred to applicants filing green patents at no additional program cost.
The amendments will allow for the creation and diffusion of technology and will encourage and protect innovation and technology transfer by providing quick access to Canada’s strong intellectual property regime. They will further assist in contributing to an effective response to environmental challenges by facilitating the market entry of environmentally beneficial technology. As a result, Canada’s overall economic situation and position in the green technology sector is expected to be enhanced by the implementation of this regulation amendment.
Internationally, several major intellectual property offices have already instituted similar mechanisms to advance and promote the development and patenting of green technologies. By following suit, CIPO will be able to raise Canada’s international profile.
Consultations on the definition of green technology were initially held with NRCan and Environment Canada. Comments received were taken into consideration, together with a review of definitions being used in other countries with similar regulations, and it was determined that a detailed definition of green technology would not be proposed. Instead, all applicants who submit a declaration that their application relates to technology, the commercialization of which could help to resolve or mitigate environmental impacts or to conserve the natural environment and resources, are eligible for advanced examination under the proposed amendment.
Proposed amendments were published in the Canada Gazette, Part I, for a 30-day consultation period between October 3 and November 1, 2010. Written comments were received from the Intellectual Property Institute of Canada (IPIC).
Comments relating to the field of technology requirement were positive and qualified the requirement as well balanced. Concerns were raised regarding the absence of a more robust screening criterion for preventing abuse of the mechanism, the absence of an explicit consequence to the filing of a false declaration and the inability of clients to request advanced examination in certain circumstances.
After a review and consideration of the comments and proposals, CIPO determined that the proposed Rules not be amended. CIPO takes the position that the proposed Rules in conjunction with the existing legislative framework already provide adequate tools to efficiently address the concerns raised.
IPIC made note of the potential risk whereby the validity of a patent application may be exposed where requesters file a false declaration. CIPO takes the position that the wording of the declaration is broad enough to encompass a wide range of environmentally beneficial inventions and that the level of risk is appropriate in playing the role of an effective deterrent against abuse of the new advanced examination service.
In a situation where it is not clear to an applicant if their invention satisfies the content of the declaration, and accelerated prosecution is still desired, other means are still available to advance the application under paragraph 28(1)(a).
With respect to the suggestion from IPIC to introduce additional screening criteria, the latter would have the effect of lengthening prosecution, which is contrary to the objective of the proposed regulation. It would also shift some of CIPO’s resources towards the assessment of a criterion that is non-essential to patentability.
IPIC also suggested that the new subsection 28(2) related to extensions of time and abandonment be amended as it is overly punitive. However, abandonments and extensions of time have been found to introduce significant delays in the prosecution of patent applications. The restriction of the new service to patent applications that have not been subjected to such delays after the coming into force of the proposed amendments is considered to be an appropriate way to eliminate these delays which are inherently contrary to the objective of advanced examination.
IPIC further expressed concern that an applicant under the proposed Rules cannot exercise privileges given to other applicants. CIPO takes the position that expedited examination under this new provision is itself a privilege that requires a commitment from both the applicant and CIPO to proceed without undue delay. IPIC specifically raised the exceptional situation where applicants intentionally let applications be deemed abandoned in order to introduce additional amendments after allowance. These files are automatically examined in an expedited fashion and therefore no loss of privilege will occur.
Implementation, enforcement and service standards
The Patent Rules are enforced by the application of existing provisions in the Patent Act. Enforcement and compliance provisions therefore remain unchanged as a result of the regulatory amendments. Accordingly, there are no new compliance and enforcement provisions and no additional costs required to monitor and enforce these regulatory changes.
CIPO will establish the following service standards for all applications that have been accorded advanced examination: until a patent application is approved for allowance, a response will be provided to the applicant within two months from the date a correspondence is received at CIPO.
Success in meeting these service commitments will be monitored and reported on CIPO’s Web site. CIPO will review these standards on a regular basis.
The delivery of high-quality and timely intellectual property products and services is at the core of CIPO’s mandate and commitment to achieving operational excellence.
Patent Administrative Policy, Classification and International Affairs Division
Canadian Intellectual Property Office
50 Victoria Street
Place du Portage, Phase I
S.C. 1993, c. 15, s. 29
R.S., c. P-4