Law Times

Law timeS • September 20, 2010 FOCUS PAGE 13 Countries offer new ways to speed up patents Programs include reciprocal agreements with other jurisdictions BY JUDY VAN RHIJN For Law Times frustration, with the introduc- tion and extension of a variety of fast-track programs in the Canadian and U.S. patent of- fices. With most Canadian in- ventors applying for patents in both jurisdictions, the variety of possible programs will make navigating the law an exercise in strategy rather than patience. There are two fast-track pro- L grams in Canada. In place since January 2008 for the United States and since October 2009 for Japan, South Korea, and Denmark, the Patent Prosecution Highway pilot program operates through reciprocal agreements between countries. The idea is to streamline the granting of patents in one country when another ju- risdiction has already granted the corresponding approval. The second program, which is still going through the legislative process, is a fast-track proposal for green technology. Similar schemes are already in place in the United States, Britain, South Korea, and Australia. Consultations on the proposal will take place in the fall, meaning the program could be in operation by January or early spring. "Applicants have always been able to expedite by paying an extra fee," says Keith Bird, a partner at Lang Michener LLP. "The introduction of the two new schemes is really doing the same without the fee." Mark Sajewycz, a partner at Ogilvy Renault LLP in Toronto, is already preparing clean-tech- nology applications to take ad- vantage of the new green scheme. Unlike the current special-case program, there's no need to al- lege any prejudice, as the subject matter is the only criteria. "This will be of benefit to green tech- nology clients because the earlier granting of patents stimulates investment and commercializa- tion and especially helps startup companies establish a dominant market position," says Sajewycz. "Before you have an affirma- tion by the patent office that the product is patentable, the investment is only speculative. For people wanting to provide finance, there is still some risk as to the value of the technology." Jeffrey Tracey, an associate at Ridout & Maybee LLP in Toronto, agrees that when com- panies are at an early stage of growth, venture capitalists like to see patents in hand. "They especially like to see a favour- able result from examinations to get an indication that a patent is likely to be granted," he says. There's also an advantage from a protection point of view. "The sooner a patent is granted, the faster you can exploit your rights and stop people infring- ing them," says Sajewycz. "It takes three to five years for an application to mature normally. www.lawtimesnews.com ong waits for patent ap- proval could become a matter of choice, not You are protected as soon as you file but you can't enforce your rights and stop people from infringing until you have an is- sued patent." A similar pilot program for green technology has already begun in the United States. It accelerates the examination of green-technology patents filed before Dec. 8, 2009. There's a possibility the program will con- tinue if feedback is positive. The government has already tweaked it because it wasn't as popular as expected. "Initially, the applica- tions had to be classified as cer- tain subject matter," Tracey says. "Applications were getting reject- ed because they didn't have the proper classification. They have now removed that restriction to broaden the scheme's appeal." The United States is now proposing a three-track system for general applications. "The new U.S. three track is similar to systems elsewhere that have fast, regular, and slow," Bird says. "The slow option gives more flexibility, say if there's a startup company that doesn't have the funds to deal with an office ac- tion. My concern with the slow track is that we will end up with an ever increasing 'pending, but unexamined,' pile. That causes uncertainty in the marketplace. There may be a patent pending that hasn't been examined, but is it valid or of any merit?" In terms of Canada, Bird de- scribes our rules as an infinite track system that already cov- ers the three options proposed in the United States. "You don't have to ask for an examination for five years and you can delay the first office action for eight to nine years," he says. "The flipside is that you can pay $500 and get it in two to three months." The Canadian Intellectual Property Office is proposing a change to the present special- or accelerated-case scheme by putting the onus on the appli- cant to keep the file moving expeditiously. "Presently, if a matter is sent to the top of the list, it stays at the top whether the applicant keeps it going or not," says Bird. "If they fail to respond, it goes back to the top when they finally do. It is now proposed that there will be a three-month response time instead of six months. If you don't adhere, it goes back to the regular system." Bird believes that's a fair change. "There are only so many examiners at the pat- ent office, and you're bump- ing someone else's appli- cation. If you ask them to expedite it, you don't then get to slow it down." There will soon be so many "The choice is driven by the business situation of the cli- ent," says Bird. "If you can't address an incoming office ac- tion in two to three months, then you should delay. But if you need a patent in hand to stop a competitor or gain a valuation, then flexibility is a good thing to have." As more than 90 per cent Investors 'like to see a favourable result from examinations to get an indication that a patent is likely to be granted,' says Jeffrey Tracey. options with varying time frames that lawyers will have to address which program of- fers their clients the best result. The patent prosecution group at Lang Michener, for example, has weekly meetings for strategizing how to use the various programs. of Bird's clients seek patents in the United States as well as Canada, there's also a choice as to where to file first. "It's another tactical decision," he says. "In many circumstances, you should file in Canada first, especially if the inven- tion is not green technology, because we don't have to show evidence of prejudice here. Canada can give you an ex- pedited action in two to three months and perhaps an allow- able subject matter statement in six months. Then you can file in the U.S. To file in Canada first and then leverage the U.S. process is useful." LT Tom Kurys (L) and Dan Macdonald (R) Dimock Stratton welcomes Thomas Kurys and Daniel Macdonald Tom's practice includes all areas of intellectual property litigation and patent prosecution, with an emphasis on pharmaceuticals and biotechnology. Tom completed the jd program at Osgoode Hall Law School in 2009, where he was awarded prizes for both Patents and Trade-marks for having attained the highest grade in each of those courses. Dan's practice encompasses all areas of intellectual property litigation and patent prosecution, with particular emphasis on pharmaceuticals. Dan received his jd from Osgoode Hall Law School in 2009, where he was a member of the Harold G. Fox Intellectual Property Moot team. Welcome to the firm! Dimock Stratton llp experience. results. 20 Queen W. 32nd fl, Toronto | 416.971.7202 | dimock.com Untitled-9 1 9/13/10 4:21:39 PM

• Cover
• Colombian Expansion
• Early Campaigning
• Focus On Intellectual Property/Trademark Law