Announcements from USPTO and CIPO Helpful to Applicants

Patent applicants in the US may soon be able to expedite the examination of their applications. The United States Patent and Trade-mark Office (USPTO) recently published a proposal setting out the procedural steps and requirements for a new accelerated examination process. Under this new process, applicants who request and are entitled to have the examination of their application accelerated will receive a final decision on the patentability of their invention within 12 months. To be eligible, applicants must provide the office with specific information. For example, applicants must search for and submit all of the prior art relating to the subject matter of the invention together with an explanation of how their invention differs from what is taught by the art. Applicants must also explain how their invention is useful and how the written description provided supports the claims filed. (Under the conventional examination process, applicants are required to submit only the prior art they know of, and do not have to conduct any specific searches for additional art or provide an explanation of their relevance). In exchange for accelerated examination, applicants will sacrifice some of the flexibility provided under the normal process. For instance, the number of claims allowed in each application and the time periods for responding to correspondence from the examiner are reduced. In Canada, accelerated examination has been available for some time. An applicant seeking a shortened examination period is required to file a request for accelerated examination, pay the prescribed fees and satisfy the Commissioner that the failure to expedite examination would likely prejudice their rights. Unlike the recent US proposal, accelerated examination in Canada does not ensure that a patent will issue within 12 months. However, a recent announcement from the Canadian Intellectual Property Office (CIPO) suggests that the turnaround time for the prosecution of trade-mark applications in Canada will be decreasing. According to a posting on CIPO's web site, in an effort to improve service and products, the office has hired and trained 28 new trade-mark examiners over the past four months. To review the USPTO's announcement, visit: http://www.uspto.gov/web/offices/com/speeches/06-37.htm To review CIPO's recent announcements, visit: http://strategis.gc.ca/sc_mrksv/cipo/new/news_updates-e.html Summary by: Lenni Carreiro