Article by Curtis Behmann, Borden Ladner Gervais LLP 
As a Flintbox member, you know the importance of protecting your IP. One of the frustrations of patent owners is the time it takes between filing a patent application and getting an issued patent. With patent office backlogs measured in years, this article explores some ways to expedite the process in Canada and in the United States.
United States – Easier for some
If your invention relates to cleantech, biotech or national security you may be in luck. While advancing prosecution of a U.S. application has historically been relatively onerous – or limited to certain situations – it is now easier in certain cases. On the cleantech side, some applications can be expedited including: an invention that materially enhances the environment of mankind, contributes to the discovery or development of energy resources, contributes to the more efficient utilization and conservation of energy resources, or involves superconducting materials. On the biotech side, applicants can expedite prosecution of inventions related to safety of research in the field of recombinant DNA, or relating to HIV/AIDS or cancer. Inventions that contribute to countering terrorism are also included.
If it is not clear from the application, a statement must accompany the petition explaining why the invention materially meets one of the conditions above. This is in addition to the request and the $US 130 government fee. The case will then be given priority in the examination queue.
Canada – Equality for all
In Canada, the prosecution of any patent application can be advanced simply by filing a request and paying a $500 government fee (along with applicable professional fees).
After submitting a “special order” request, as they are known, you will receive an Office Action from the Canadian Patent Office in about 3 months. That is much faster than the typical 3+ year wait. Aside from the special order request and fee, examination of the application must be requested and the application must be published (laid open for public inspection).
While it is not guaranteed, special order cases typically continue to receive higher priority treatment after a response to a first Office Action has been filed.
Patent Prosecution Highway
The Canadian and U.S. patent offices are in the midst of a one-year Patent Prosecution Highway (PPH) pilot project, which allows each patent office to benefit from examination already done by the other office.
For example, applicants can expedite prosecution of a Canadian application if the claims are amended to sufficiently correspond with allowed claims from a corresponding U.S. application. The Canadian application must claim the benefit of priority of the corresponding U.S. application that was filed first.
In contrast to the “special order” approach, there is no government fee for PPH requests during the pilot project. The pilot project officially ends on January 28, 2009, and fees may apply if the service becomes permanent.
Pre-Filing Tips
In addition to the post-filing approaches discussed above, there are some things you can do before filing a patent application that should help get a patent faster – though they won’t help you jump the queue.
Performing a patentability search can help identify relevant references before the application is filed. Distinguishing aspects can then be emphasized, which can assist in prosecution by making the Examiner’s job easier.
Crafting a well-drafted patent application, that can be relied upon to support future applications and prosecution, is well worth the time, effort and investment.
About the Author
Curtis Behmann is a patent agent in the Ottawa office of Borden Ladner Gervais LLP, and a member of the firm’s intellectual property and technology group. He advises researchers, entrepreneurs and innovators and corporations on all aspects of patent protection and strategy, and is a licensed professional engineer.
For more information on the Intellectual Property Group at Borden Ladner Gervais LLP, and how you can contact them for a complimentary IP Workshop or Seminar, please click here. View the Borden Ladner Gervais profile on Flintbox.
