Front-of-the-line treatment of “green innovations” coming soon to the Canadian Intellectual Property Office
July 21, 2010

Increased focus on so-called “green” or “clean” technological solutions, such as those relating to the environmental, biotechnology and energy sectors, creates a number of opportunities for companies innovating in these areas. To block competitors from the marketplace, a common commercial strategy is to obtain patent protection to exclude others from making, using and selling their patented technologies. Because patents can be powerful tools for corporate growth and marketability, the creation and maintenance of a patent portfolio can increase the value of a company, help attract investors and earn revenue through licensing and strategic partnerships. Such advantages of patenting are particularly important for companies innovating in the green technology sectors because the nature of their innovations may necessitate greater time and investment before achieving commercialization.

The process of obtaining a patent in Canada begins with the applicant (or the applicant’s patent agent) first drafting a patent application and filing it with the Canadian Intellectual Property Office (CIPO). In Canada, patent applications are normally examined sequentially according to the date on which examination was requested. One of the main procedural challenges that applicants face upon filing a patent application is lengthy processing and prosecution times. Under regular Canadian examination procedures, it may be several years before the Examiner issues a first substantive Office Action in connection with the filed application, which may be followed by several years of prosecution before the applicant is awarded a Canadian patent — depending, for example, on the complexity of the potential invention and the state of the prior art. Because green technology innovations may integrate several pre-existing technologies from various scientific and engineering disciplines, it can be a more challenging and lengthy process to convince the Examiner that the proposed invention is novel and non-obvious in view of the prior art, both requirements for obtaining a Canadian patent.

Under the current Patent Rules, the Commissioner of Patents has the authority to accelerate the examination of a patent application out of order if the applicant meets certain criteria, including filing a request, paying a fee and showing that failure to advance the application is likely to prejudice the applicant’s rights. The current Patent Prosecution Highway (PPH) program provides another avenue for advancing the examination of an application out of turn if an applicant receives allowance in connection with a corresponding application from certain foreign patent offices, including the United States Patent and Trademark Office. Both of these patenting strategies may be available to green technology applicants if they meet the requisite criteria.

Yet another alternative within the Canadian patent regime for expediting patent applications may soon be open to companies with green innovations. In view of increasing global importance of green technologies, and in an effort to encourage further investment in such technologies, CIPO announced on May 19, 2010, that it is developing a targeted program for accelerating the examination of green patent applications. The program will be implemented by way of proposed amendments to the Patent Rules and will be published for a consultation period in the fall of 2010. CIPO has indicated that the proposed amendments to the Patent Rules are in line with the Government of Canada’s priorities on science and technology, supporting the growth of small and medium-sized businesses, developing a clean energy economy and taking government action on global warming and capacity building. CIPO has further indicated that expediting the prosecution of patent applications relating to green technologies within the Canadian intellectual property system will foster investment and the advancement of commercialization of technologies that could help mitigate environmental impact, which could lead to the conservation of the natural environment and resources.

Under the proposed initiative, no additional fee would be required for advancing the examination of green technology patent applications. To be granted access to the expedited procedure, an applicant will simply need to submit a declaration stating that the application relates to “a technology which could help to resolve or mitigate environmental impacts or conserve the natural environment and resources if commercialized.” Under the proposed new service standards, CIPO would aim to produce a substantive Office Action for expedited applications within two months of receipt of the applicant’s request for expedited examination or a response to an Office Action. This proposed period is substantially shorter than the typical two- to five-year examination phase under regular examination procedures. A response from the applicant to the  Office Action will be required within three months of the date of receipt of the Office Action. Furthermore, it has been proposed that if an applicant should cause any delay to occur during the prosecution by, for example, allowing the application to go abandoned, the Commissioner will not advance the application for examination out of this routine order or will return it to its routine order. At this early stage of the initiative, no other requirements have been identified by CIPO.

CIPO’s proposed green technology initiative appears to be in line with similar initiatives recently implemented by various other national patent offices, including offices in the United States, Australia, Japan, China, Korea and the United Kingdom. However, all of these jurisdictions have their own requirements for entry into the program, including definitions of what technologies are eligible for expedited examination, what types of applications qualify and what types of claims may be included.

CIPO’s proposed amendments may be regarded as a way to stimulate the creation and protection of green technologies by providing efficient access to Canada’s strong intellectual property regime. The amendments may be further viewed as an effort to assist in contributing to an effective response to environmental issues by helping to ensure that environmentally beneficial technologies reach the marketplace more rapidly. As the green initiatives at CIPO and other patent offices further develop, there may be also a potential in the future for harmonization to speed up the prosecution of foreign corresponding applications, an approach similar to that currently available under the PPH programs. This option may be particularly attractive for start-up or emerging companies with green technology platforms for which a patented technology or a portfolio of technologies may be of paramount importance for securing investment or strategic partnerships.

However, as is true with the PPH programs, the accelerated green patenting initiatives may not be appropriate for all green technology patent applications as other avenues within the patent system to expedite examination and to maximize claim scope may be a better fit for a particular applicant. It is advisable that green technology applicants consult a patent attorney in the jurisdiction of interest before committing to a particular patenting strategy.

The success of CIPO’s green patenting initiative and related initiatives at foreign patent offices remains to be seen and may be dependent on how receptive applicants are to using such programs, how well the programs address the applicants’ patenting needs and how effectively the applicants may deal with any restrictions imposed. Regardless of whether companies with green innovations participate in the fast-track examination initiatives, they are well-positioned to prosper as global endorsement and stimulus relating to this sector will likely continue to intensify in the near term.

Kathy Rzeszutek, Vancouver

 

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