Considerations when using the new "green" accelerated examination procedure
June 22, 2011

A new program for accelerating examination of patent applications relating to environmental ("green") technologies has been available in Canada since March 3, 2011. Under the new program, the examination of a patent application is advanced out of its routine order if the applicant files a request and 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." There is no government fee to request accelerated examination under the new program.

There has been little guidance to date from the Canadian Patent Office on all of the qualifications for the new program. In the meantime, applicants should consider the following before making a request for accelerated examination.

First, there are a number of prerequisites. The application must be laid open to inspection by the public (Canadian patent applications are laid open for public inspection 18 months from the earliest priority date, or earlier upon request by the applicant) and examination must have been requested and the examination fee paid. Further, the application must not, at any time after April 30, 2011, have been abandoned or received an extension of time of any deadline under section 26(1) of the Patent Rules.

With respect to how the technology as defined should relate to the application, neither the amended Rules nor the Canadian Patent Office have stated any requirements with respect to content of the patent specification. Moreover, there does not appear to be any requirement that the claimed invention relate to "green technology." This is in contrast to stated requirements for similar initiatives in some other jurisdictions. For instance, the USPTO Green Technology Pilot Program (for accelerating examination) requires that the claims "be directed to a single invention that materially enhances the quality of the environment…" It is unclear whether this difference is significant, and if so, in what way.

The amended Patent Rules establishing the new program do contain a basic definition of "green technology." However, an applicant should exercise caution in determining whether an application relates to green technology, since the definition is imprecise.

There should be little issue with technologies that are unquestionably green, such as improvements specific to wind turbines and solar cells. However, many examples exist that are less certain. For instance, consider an application that relates to a new electric generator designed for use in an environmentally friendly context, such as in a wind turbine, which can also be used in a coal-fire generating plant. It is not clear whether the electric generator falls within the definition of "technology" in the amended Rules. Another example would be an application that relates to a durable, fireproof and light-weight foam using CFCs. CFCs may deplete the ozone layer and their use is avoided for this reason. On the other hand, the foam is useful in aircraft seat cushions (light-weight and fireproof) and the reduced weight will reduce aircraft fuel consumption and CO2 emissions. Whether such a foam falls within the definition of "technology" in the amended Rules may be unclear.

The Canadian Patent Office notes on its website that it will not question the declaration. As the effect of an inaccurate declaration is uncertain, if the application's connection to green technology is at all uncertain, the applicant may not want to use the new procedure. Depending on the application, other ways of accelerating exist, including requesting "Special Order" status for accelerating examination, and using a Patent Prosecution Highway ("PPH") program in cases where the cases in Canada are of the same scope as those in other PPH jurisdictions.

In view of the uncertainty surrounding the new program for accelerated examination for green technologies, it is recommended that an applicant consult with a patent agent before taking any action under the new program.

Glen S. Kurokawa, Ottawa

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.

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