Divisional Filings may be made at any time before the parent application issues or where the parent has become abandoned, at any time before the period for reinstatement of the parent expires.
Double Patenting in Canada warrants special consideration, since we have both novelty type (same invention) and obviousness type double patenting. Furthermore, there is little in the way of guidance as to the making a determination as to double patenting, particularly with regards to obviousness type double patenting. The only way to avoid double patenting is through a unity objection. Unlike the United States, there is no option for a terminal disclaimer. Accordingly, it is strongly recommended that voluntary divisional applications not be filed and that any subject matter that may be of interest be claimed in an initial Canadian application to draw a unity objection, if appropriate. Additionally, where there are two or more pending Canadian applications with related subject matter, consideration should be given to consolidating the subject matter in a single application, if possible, and/or to the order in which the applications issue. Since, it is only the second or subsequent patent to issue that is open to a double patenting rejection.
Patent Prosecution in Canada is generally productive, cost effective, and provided that prosecution is advancing, rarely results in a final office action. The number of office actions greatly depends on the subject matter being claimed and the inclination and/or budget of the applicant for arguing in support of a desired claim breadth. However, as in many jurisdictions, where the subject matter is contentious or where there are considerable obviousness concerns, the prosecution may be less productive. Furthermore, there is often some variation between different examination units and to a lesser extent between examiners. Nevertheless, allowance rarely occurs without at least one office action, and often 2 -3 office actions are received before a final determination is made.
Furthermore, Canada has a number of appeal options through the Patent Appeal Board and the court system.
As mentioned above, Canadian examiners are not terribly quick to issue a final office action provided that progress is being made in the prosecution of the application. Furthermore, an examiner will usually advise the Applicant in an office action whether a final office action is to be expected, where an objection is not being overcome by argument or amendment. In addition, most Canadian examiners will conduct telephone interviews with the goal of furthering examination.
Expedited Examination opportunities are available in Canada through Advanced Examination (“Special Order”) procedures, and Patent Prosecution Highway (PPH) procedures.
Advanced Examination (“Special Order”) is one way to expedite the prosecution of a Canadian patent application, where a failure to advance an application is deemed by the Commissioner to likely to prejudice the rights of an Applicant. A request for Advanced Examination needs to be accompanied by (a) an assertion that the failure to advance an application is likely to prejudice the rights of an Applicant OR (b) a declaration stating that the application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or conserve the natural environment and resources, along with the payment of the government fee (currently $500). However, the Applicant is not required to disclose the details of the prejudice in (a).
A Special Order application will receive priority processing by the Patent Office, whereby a first Office Action on the merits can be expected within 3-6 months of the acceptance of the Advanced Examination request. Furthermore, the Applicant must respond to any office correspondence within a shortened response period of 3 months, rather than the usual 6 months. However, failure to adhere to the shortened time periods will result in the removal of the special order status. Furthermore, if an extension of time is requested or an application utilizes the reinstatement procedures the application will also become ineligible for special order status.
A request for Advanced Examination requires that the application be open to public inspection (i.e. is published) and that a request for examination has been filed, but examination of the application has not yet begun. Furthermore, the application must not have been the subject of reinstatement procedures after 30 April 2011. Note: Examination and advanced examination may also be requested by a third party, provided that the application has been laid open to the public.
Patent Prosecution Highway (PPH) provides for a number of options to advance the prosecution of an application which is perhaps more onerous than the Advanced Examination procedures. A PPH request form must be accompanied by the following:
(1) the claims on file or amended claims which conform to the PPH jurisdiction claims;
(2) a claim correspondence table; and
(3) one of the following:
(i) a copy of the letters patent cover page from the PPH jurisdiction;
(ii) a copy of the office actions and the claims indicated as allowable from a PPH jurisdiction; or
(iii) a request that CIPO retrieve the actions and the claims as allowed in a PPH jurisdiction.
Optionally, a statement may be included that the Applicant has reviewed the application on file, and that the description conforms to Canadian patent application requirements and practice OR a statement that the Applicant is amending the application so that it conforms to Canadian patent application requirements and practice.
Furthermore, a PPH request may only be made where (a) the National Phase entry was after 31 January 2011, (b) the application is open to public inspection, and (c) a request for examination has been filed. However, items (b) and (c) may accompany a PPH request.
It is important to note that use of the PPH procedures may be further complicated, where the claims may be deemed to contain subject matter that is non-statutory in Canada or where claims do not “sufficiently correspond” to those allowed in a PPH jurisdiction.
Details regarding PPH Jurisdictions may be found at http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02160.html.