Legal news and trends for Canadian in-house counsel and c-suite executives
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By Marcus Gallie and Jaimie Bordman Take the Patent multiple countries, since the amount of time it typically takes to obtain a pat- ent can vary significantly from country to country. In some cases through the normal course, patent applications can remain pending for five years or more, during which time competitors can pot- entially operate with impunity (although in some countries they may pay for it later). But, there is another way. Fortunately, several national patent T offices, including the Canadian Intellec- tual Property Office, have entered into agreements designed to speed up the patent application process at the nation- al level where an application for the same invention has been allowed else- where. These so-called Patent Prosecu- tion Highway agreements can be lever- aged to get accelerated examination so long as one is willing to limit the scope of the resulting patent in one country to that which has been allowed in another. If so, examination that would normally take years to occur will often occur in only a few short months. The entrance to the highway consists of first obtaining an allowance of claims from one of the participating patent offices. To maximize the benefit obtained by using the PPH one should aim to obtain an allowance as soon as pos- sible, preferably without any intervening objections from the patent office. Key elements to obtaining speedy allowance he length of time required to obtain enforceable patent rights can be daunting. This is particularly true when seeking patent protection in Prosecution Highway Getting patent applications to grant in the fast lane. consists of performing a thorough pat- ent search before preparing and filing the application and preparing an appli- cation with claims having an appropri- ate scope, leaving few, if any, issues to be resolved with the patent office; this is something that usually requires the assistance of a skilled patent agent. Next, you must plan your route appropriately. The PPH is not a sin- gle highway but more of a network of highways. There are numerous ways in which one can take advantage of the accelerated examination offered by the PPH, and some routes may be faster than others. As well, some routes may not be available depending on the patent office in which one files the first applica- tion. This is because some patent offices require that to use the PPH, claims must be allowed by the patent office in which the application was filed first. Other offices only require that the claims be allowed by any patent office that has examined the claims earlier in time. It is therefore important to consider where you want to go and how to get there: that is, in which countries you would like to obtain patents on an expedited basis, and what is the best filing strategy to get those expedited patents. The for- mer question is clearly a matter for the patent applicant to decide. As for the latter question, it is best to consult your patent agent. One particular route, which has an express lane, and works well for Canadians and others, is to obtain an expedited allowance from the Canadian Intellectual Property Office using the special order provisions of the Patent Rules, and then use this allowance as the basis for using the PPH in other coun- tries. This route, dubbed the "Toronto pronto," can result in issued patents in Canada and elsewhere in less than two years — clearly an advantage when seeking protections in countries like the U.S. where the prosecution phase can have many bumps along the way in the normal course. The shortening of the time period to allowance can also result in substantial cost savings. Using this process does, however, require a steady hand on the wheel. Early Canadian pub- lication must be requested and, as well, once expedited examination is granted, reduced time to respond to examiners' reports is allocated — small inconven- iences for a speedy journey though. The route works like this: by paying a "special order" fee (currently $500), a Canadian patent application can receive advanced examination, which often occurs within only a few months of the special order request. Assuming that the application as filed is in or close to a condition for allowance, the claims will be allowed quickly by the Canadian Intel- lectual Property Office, which can serve as the basis for requests for accelerated examination in the United States and other countries. By using this route, appli- cants can get issued patents several years faster than they otherwise would have been granted. So, needing or wanting patents in a hurry, consideration should be given to using the PPH system, in conjunction with the special order provisions of Canada's Patent Rules for a smooth ride on the highway. IH Marcus Gallie is a partner with Rid- out & Maybee LLP and Jaimie Bordman is an associate in the firm. They both work in the Ottawa office. INHOUSE FEBRUARY 2012 • 11 for those who find themselves