Canada launched its Patent Prosecution Highway (PPH) program a decade ago with the goal of fast-tracking patent examination and improving patent quality. Since its introduction, the PPH program has been an enormous success and offers numerous benefits to applicants. Data published by the Canadian Intellectual Property Office (CIPO) on the use of the PPH program suggests that applicants who have used the PPH program have seen their applications examined sooner and have encountered fewer office actions. The success of the PPH program has resulted in foreign patent office participation being extended. For example, CIPO recently announced that it has extended the PPH program with the European Patent Office for a period of three years.
Smart & Biggar recently conducted its own internal study of PPH efficacy and confirmed that applications handled under the PPH program indeed bettered CIPO’s averages for (i) the wait time to first action, (ii) the total number of office actions, (iii) the allowance rate with no office actions, and (iv) the overall grant rate. These statistics, combined with the absence of a government fee for participating in the PPH program, mean that using the PPH program in Canada can be exceptionally fast and cost-effective.
Requirements of the PPH.
Entry into the PPH program is based on a favourable examination outcome of a foreign application such a national work product indicating allowance ("PPH application") or a Patent Cooperation Treaty (PCT) work product with a positive International Report on Patentability ("PCT-PPH application"). When requesting entry into the PPH program, the claims of the Canadian patent application must be of the same or narrower scope than those on which the PPH request is based or must be amended to be so.
The list of foreign patent offices whose work products can form the basis of a PPH entry request is a long one and includes the United States Patent and Trademark Office, the European Patent Office, the Japanese Patent Office, the Korean Intellectual Property Office, and the State Intellectual Property Office of the People's Republic of China. A complete list can be found here along with specific requirements for participation in the PPH program.
Time from PPH request to first action. For all PPH and PCT-PPH applications that had a first action (either an office action or a notice of allowance) issued in the first quarter of 2017, CIPO issued the first action on average about 4 weeks after a PPH request was made for PPH applications and about 5 weeks after a PPH request was made for PCT-PPH applications. By contrast, for all non-PPH applications that had a first action issued during the same time period, the average time to issue a first action after a request for examination was much longer at over 11 months. Thus, using the PPH program can eliminate most of the delay before a first action is issued.
Time from PPH request to final decision. For all PPH and PCT-PPH applications having a final decision in the first quarter of 2017, the average pendency from a PPH request to final decision was less than six months for PPH applications and about eight months for PCT-PPH applications. The average pendency for non-PPH applications having a final decision during the same time period, by contrast, was much longer at over 30 months. Thus, using the PPH program tends to reduce overall examination time.
Average number of office actions. For all PPH and PCT-PPH applications that were allowed in the first quarter of 2017, the average number of office actions was only 0.9 for PPH applications and 1.2 for PCT-PPH applications. By contrast, 1.7 office actions were typical for non-PPH applications that were allowed during the same time period. This represents significant cost savings to applicants in terms of the dollars spent prosecuting an application.
Allowance rate without office action. Consistent with the tendency to reduce the number of office actions received, for all PPH and PCT-PPH applications that were allowed in the first quarter of 2017, 37% of PPH applications and 23% of PCT-PPH applications did not have any office actions at all. By comparison, only 3.9% of non-PPH applications that were allowed during the same time period did not have any office actions issued.
Grant rate. When comparing applications that were either granted or permanently abandoned in the first quarter of 2017, grant rates are significantly higher for PPH applications (89%) and PCT-PPH applications (88%) compared to non-PPH applications (70%).
In summary, applicants who use the PPH program can benefit by saving time, cost and effort. Smart & Biggar has extensive experience using the PPH program to accelerate examination in Canada and achieve cost benefits for our clients.
To learn more about how your organization or your clients can participate in the PPH program in Canada, please contact a member of our Patent Group.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.