The Canadian Intellectual Property Office ("CIPO") recently announced that due to the success of the Patent Prosecution Highway ("PPH") pilot project between CIPO and the United States Patent and Trademark Office ("USPTO"), effective January 29, 2011, the PPH pilot project with the USPTO will be replaced by a PPH agreement for an indeterminate period. The requirements and procedures of this agreement remain the same as that of the Canada-U.S. PPH pilot program.
Under the Canada-U.S. PPH program, accelerated examination of a Canadian application can be requested when a corresponding U.S. application has one or more allowed claims. All claims on file in the Canadian patent application, either as originally filed or as amended, must sufficiently correspond to one or more allowed (or patented) claims of the corresponding U.S. application (or patent). There are also various requirements for the Canadian patent application to effectively establish it as corresponding to the U.S patent application.
It is worth noting that the opposite scenario is also possible under the Canada-U.S. PPH program, namely that accelerated examination of a U.S. application is performed on the basis of a previously allowed corresponding Canadian patent application. However, this typically requires some planning in advance, as there are requirements for the U.S. patent application to effectively establish it as corresponding to the Canadian patent application. One approach is to first file in Canada, and then file in the U.S. with a priority claim from the Canadian patent application.
As well, CIPO has announced that it is extending the Patent Prosecution Highway pilot project to include Patent Cooperation Treaty ("PCT") applications where CIPO had acted as the International Searching Authority ("ISA") and/or the International Preliminary Examining Authority ("IPEA"). As with other PPH initiatives, the PCT-PPH program can result in expedited examination and issuance of a Canadian patent. CIPO's goal is to issue an Office Action or a notice of allowance within 90 days of a request filed under the PCT-PPH program.
The PCT-PPH program is scheduled to commence on January 31, 2011 and will last for two years. As with other PPH programs, there is no official government fee for requesting advanced prosecution under the PCT-PPH. There is a requirement that the PCT application be nationalized in Canada on or after January 31, 2011. Details of further requirements have not yet been released by CIPO, but they are expected to be similar to those for other PPH programs.
Since the introduction of the Canada-U.S. PPH program, CIPO has branched out to establish additional PPH programs with several other patent offices:
- the Danish Patent and Trademark Office,
- the German Patent and Trade Mark Office,
- the Japan Patent Office,
- the Korean Intellectual Property Office,
- the National Board of Patents and Registration of Finland, and
- the Spanish Patent and Trademark Office.
If a foreign patent application has been allowed by any of these patent offices and there is a pending corresponding Canadian patent application, then it may be possible to request accelerated examination of the Canadian patent application based on the outcome of the foreign patent application. The opposite scenario is also a possibility for each of these patent offices.
Applicants interested in streamlining the Canadian patent examination process using the PPH program are encouraged to contact us to determine whether the PPH program is appropriate. There are important considerations that may require careful attention on a case-by-case basis. For instance, important consideration may be required in light of Canada’s laws against double patenting. In general terms, the claims of a Canadian patent must not be conterminous with or obvious over the claims of a Canadian patent previously granted to the same patentee. Double patenting in Canada is not well aligned with U.S. continuation or divisional practice, and cannot be overcome by way of terminal disclaimer.
In our experience, CIPO has in some cases issued notices of allowance in less than 90 days from requesting accelerated examination. Therefore, the PPH program has shown great potential for streamlining the patent examination process.
Our articles and newsletters are informational only, and do not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.