Benoit Yelle Partner, Patent Agent
Partner and Patent Agent
Benoit Yelle is a patent agent licensed in Canada and the United States and a partner in Lavery's Intellectual Property group.
Benoit helps companies develop and enhance their intellectual property. He identifies their business opportunities and helps them establish a protection plan. He sees the potential of technologically innovative projects and maximizes their impact. Benoit adapts his approach and provides services that contribute to achieving the business objectives set by the client.
The technical expertise Benoit has developed over the years ranges from mechanical inventions to quantum technologies, hand tools, medical devices, network protocols, telecommunications, software and mobile applications.
Benoit learned his trade as a patent agent in-house at a multinational telecommunications company. Before joining Lavery, Benoit was in private practice with a national general firm.
- BE (computer engineering), Polytechnique de Montréal, 2001
Boards and Professional Affiliations
- College of Patent Agents and Trademark Agents (CPATA), member of the discipline committee since 2021
- United States Patent and Trademark Office (USPTO), registered agent since 2009
- The Canadian Intellectual Property Office (CIPO), registered agent since 2009
- Ordre des ingénieurs du Québec, registered since 2006
Part 1: Four reasons to slow down and four reasons to speed up the process Part 2: Slowing down the process (CA, US, EP, PCT) Part 3: Fast track (CA, US, EP, PCT) Part 1: Why slow down or speed up the process? Slowing down the process Why would anyone want to slow down the process when it already usually takes several years for a patent to be issued? Cash flow Uncertainty for competitors Possibility of changing the scope Possibility of filing a divisional application In some cases, cash flow may justify spreading expenses over a longer period of time. Keeping an application pending longer may also be beneficial from a business perspective. In fact, it could create uncertainty for competitors, who cannot easily determine the scope of the exclusive right that may be granted to you. Moreover, claims are easier to amend while the application is pending. Lastly, filing a divisional application is usually only possible when the parent patent application is still pending. Speeding up the process If slowing down the process is so advantageous, why speed it up? Proof of patentability before expanding the patent application family Monetary valuation or capital raising Proceedings before the courts Strong negotiating position After filing a priority application, the applicant has 12 months to file corresponding applications in other countries. Filing abroad can entail considerable expenses. It may therefore be advantageous to obtain results quickly so you can make the best decision about filing applications in other countries. An issued patent is a far better indication of a technology’s value. This can have a major impact on a company’s valuation and, at the same time, allow for additional capital to be raised. Moreover, filing a patent application will not prevent infringers from marketing your technology; you may only commence proceedings in front of the court with an issued patent. The possibility of instituting legal proceedings could drastically change the tone of negotiations with your competitors—and sometimes your suppliers, too. Strategies and costs Special provisions exist to speed up and slow down the process in many territories. For the purposes of this exercise, we will discuss patent applications in Canada, the United States and Europe. We will also look at international patent applications, namely PCT applications. Part 2: Slowing down the process Canada With regard to slowing down the process, the simplest strategy in Canada is to wait before requesting examination as much as possible. While the provision for this has changed over the years, applicants now have four (4) years from the date of filing a Canadian application to request an examination. For PCT national phase entry, Canada allows an extension of the standard 30-month time limit to up to 42 months under certain conditions. However, examination request dates and maintenance fees remain the same. Therefore, this is beneficial in the short term only. For each examiner’s report (also called office action), it is possible to request an extension of the time limit by two months before the original time limit expires. This request must be accompanied by the late fee and is only accepted under certain conditions. The other option is to not reply to the examiner’s report and to wait until the application is deemed abandoned. The application may then be reinstated by filing a response to the examiner’s report and paying an additional fee. It is important to note that a Canadian application is no longer eligible for accelerated processing if an extension of the time limit was obtained for it or it was reinstated. Furthermore, while an application is abandoned, and even if it is later reinstated, third parties could obtain certain rights to the technology. United States In the United States, an extension of time fee may be paid at the same time as the reply to an examiner’s report is filed. However, the maximum time limit must not exceed six (6) months. It is also possible to file a request (or petition) for the suspension of the time limit for replying to an examiner’s report (by paying the relevant fee, of course). This request is only acceptable under certain conditions and cannot exceed six (6) months. Similarly, a request may be filed to defer the examination of the application, which may delay examination by up to three (3) years after the priority date. Once again, certain conditions must be met and there is a fee to pay. Europe As is the case for Canada, for each examiner’s report, a request can be made to extend the time limit by two (2) months before the original time limit expires. However, unlike in Canada, there are no fees or conditions for this request to be accepted. The other option is to not reply to the examiner’s report and to let the application lapse. The application may then be reinstated by filing a response to the examiner’s report and paying an additional fee. As for the 10-day rule, it will continue to apply until November 2023. This rule, which was established at a time when communications were still sent by mail, provides that a dated communication is deemed to have been delivered ten (10) days after the date of the document—the time limit is therefore automatically extended by ten (10) days. All things considered, the elimination of this rule is a plus in helping prevent various communication problems. PCT When it comes to slowing things down, the PCT application itself may be used to slow down the process. In fact, the international patent application system provides allows a decision on international applications to be made as late as 30 months from the priority date. The PCT system is based more on the reservation of rights than on slowing down the process. Nevertheless, both from cash flow and filing strategy standpoints, the longer time limit for making decisions may be beneficial. Summary–slowing down the process CA: Postpone filing the Canadian application or entering the national phase. Push back the examination request. Apply for an extension of the time limit. Do not respond, then apply for reinstatement. US: Pay time limit extension fees. Submit a request to suspend processing. Submit a request to defer the examination. EP: Apply for an extension of the time limit. Apply the 10-day rule. Do not respond, then pay the fees to have the application reinstated. PCT: Take advantage of the 30-to-42-month extension for each country. Part 3: Fast track Canada Of course, the best way to speed up the process is to request an examination as soon as possible and, above all, not put off replying to the examiner’s reports received. After requesting an examination and before receiving the first examiner’s report, it is possible to request that the application be processed expeditiously. The request requires that the Canadian application be published and it may be subject to a number of conditions. An applicant whose rights may be prejudiced by the examination time limit can pay an additional fee to expedite the process. When a patent application relates to so-called green technology or the COVID-19 pandemic, the notion of prejudice does not apply and no fee is due. Speeding up the process is also possible by taking advantage of the outcome of a corresponding application in another jurisdiction deemed credible by the Canadian Patent Office (e.g., Europe, United States, Japan, etc.). This is referred to as a PPH (patent prosecution highway) request (the French translation by “autoroute de traitement des demandes de brevet”, while quite accurate, is rarely used). United States Those who have the means to do so may pay an acceleration fee when filing the application in the US. The intent is then to complete the entire process within 12 months. The ability of the US Patent Office to meet the expectation is also taken into consideration before accepting the request. Special treatment may also be requested for a patent application where the health or age of one of the inventors warrants this. Such a request may also be made when the technology in the patent application is “green” or relates to “counterterrorism.” The US also takes part in the PPH system, and the decision made regarding a corresponding application in another jurisdiction can also help speed up the process. Evidently, it is important not to delay replying to the examiner’s reports received, no matter how else you may choose to accelerate the process. Europe The European Patent Office accepts PPH requests and also offers the “PACE” programme, which helps speed up processing times (search and/or examination) without any fees or specific conditions other than responding to examiner’s reports in a timely manner. The European Patent Office’s ability to handle the requests is also taken into account. PCT Quickly completing national phase entries (i.e., well before the 30-month time limit) makes it possible to proceed faster with the substantive examination in each jurisdiction. During the international phase of the PCT, attempts can be made to move the process along before entering the national phase. This procedure often dubbed as a “Chapter II request” does not guarantee that time will be saved, but certain questions may be anticipated thus avoid multiple delays in front of different examiners. Summary – speeding up the process CA: File the Canadian application or enter the national phase as soon as possible. Make the examination request as soon as possible. Respond quickly to examiner’s reports. Request accelerated processing based on PPH, green technology, COVID-19 technology or possible prejudice. US: Pay acceleration fees when filing. Request accelerated processing through the PPH system. Respond quickly to examiner’s reports. Submit a petition to make the application special (on the basis of age or health, green technology or counterterrorism technology). EP: Request access to PACE programme. Request accelerated processing through the PPH system. Quickly respond to examiner’s reports. PCT: Enter national phase as soon as possible. Apply for examination under “Chapter II.”
Lavery is delighted to welcome two new partners, David Tournier and Benoit Yelle, to the Business Law and Intellectual Property groups respectively. They bring cutting-edge expertise in these fast-growing sectors and a practice approach based on technological innovation. David Tournier joins the Business Law group and will focus on corporate financing. His extensive experience in private practice, in particular, bank financing, infrastructure projects, insolvency and private equity, has led him to deal with lenders and borrowers in the context of syndicated and cross-border loans, acquisition and project financings (including PPPs). David has a wide-ranging portfolio, having represented both start-ups and multinationals, as well as investors involved in engineering, green industrial projects and new technology, which is one of his passions. "Lavery has a reputation for excellence in the provincial and national markets. When combined with its independence, this reputation puts it in a good position to serve a wide range of clients in different areas of business law. The lawyers from the firm that I already knew showed me the human side of this great organization, and easily convinced me to join their wonderful team," said David Tournier. His experience in well-known law firms and as a company director will undoubtedly benefit our clients. Benoit Yelle joins the Intellectual Property group. A registered patent agent in Canada and the United States with a background in computer engineering, Benoit has developed an expertise over the years in everything from mechanical inventions to quantum technologies, hand tools, medical devices, network protocols, telecommunications, mobile applications and quantum computing. Within the Lavery network, he will focus his practice on drafting and prosecuting patent and industrial design applications. Thanks to his considerable experience in analyzing the patentability and commercial potential of invention disclosures, Benoît worked as a patent engineer and agent for a multinational telecommunications company. "Lavery's Intellectual Property group needs no introduction. We share a common vision on how best to practice IP. It also seemed to me that Lavery was the most innovative and best-suited platform to leverage current and future changes to the practice of law. I think I found the right place to harness my passion for innovation!" said Benoit Yelle. By becoming a partner and patent agent at Lavery, Benoit will be able to adapt his approach and provide services that help achieve his clients' objectives.