October 13, 2020
By Isi Caulder and Justin Philpott
Canadian Cleantech companies have a significant advantage in the form of a Green Technologies Program (the “Green Program”) currently offered by the Canadian Intellectual Property Office (CIPO). The Green Program is designed to fast-track prosecution of patent applications relating to green technologies.
Entry into the Program can be initiated by submitting a Declaration that indicates that the application relates to a technology which, upon commercialization, would help to resolve or mitigate environmental impacts or that helps conserve natural resources. The Green Program can be utilized to move a qualifying application to the front of the line for examination without any associated government fees. It is worth comparing this option to the $4,000 USD fee ($2,000 USD for small entities) to request prioritized examination in the United States.
A review of CIPO’s records reveal that patent applications examined through the Green Program move at an incredibly swift and steady pace. CIPO indicates that a first Examiner’s Report can be expected within three months from the time a request for advanced examination through the Green Program is processed. However, applications being examined through the Green Program are receiving a first Examiner’s Report even sooner – in many cases, as early as 2 to 4 weeks from the processing of the request.
The high rate of allowance for patent applications examined through the Green Program is striking. Between 50 and 60 patent applications typically enter the Green Program each year. CIPO’s records show that roughly 95% of these patent applications successfully issue to patent. Such a high allowance rate may point to a concerted effort on the part of CIPO to give the Cleantech industry a shot in the arm.
The Green Program provides applicants with an opportunity in Canada that is unheard of elsewhere – the chance to fast-track examination of their patent application without any associated government fees. Without fast-tracked examination, an Applicant typically waits one to two years for a Patent Examiner to issue a first Examiner’s Report (14.7 months is the average wait in the U.S.).
Examination under CIPO’s Green Program can be the first step in a time effective global patent prosecution strategy. With an early allowance in hand from CIPO, accelerated examination may be requested in other jurisdictions through the Global Patent Prosecution Highway (GPPH), now established between 31 Patent Offices, including the Patent Offices of the United States, Europe, China, Japan, South Korea, and Australia. A complete list of CIPO’s GPPH partners is available online.
The GPPH is a set of initiatives designed to provide accelerated patent prosecution by sharing information between participating Patent Offices. Like CIPO’s Green Technologies Program, the GPPH does not involve any government fees. The GPPH permits each participating Patent Office to benefit from the work previously done by the other Patent Office, with the goal of reducing examination workload and improving patent quality. Accordingly, fast-tracked examination results acquired via CIPO’s Green Program can also be leveraged under the GPPH to save time, cost and effort in global prosecution.
For more information on how CIPO’s Green Technologies Program can play a key role in the execution of your global patent protection strategy, please contact a member of our Cleantech practice group.
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