On September 1, 2013, the State Intellectual Property Office (SIPO) of the People's Republic of China and the Canadian Intellectual Property Office (CIPO) will commence a Patent Prosecution Highway (PPH) pilot program that will fast-track examination of eligible patent applications between Canada and China. This will lead to quicker examination and a greater number of issued patents in both countries in much less time. Thus, eligible patent applicants filing in both China and Canada can expect to achieve significant cost savings in patent prosecution expenses.
The PPH pilot program, which will last two years, will permit SIPO and CIPO to benefit from work already done by the other office, which reduces the examination workload.
Smart & Biggar has filed hundreds of requests for expedited examination under the PPH based on agreements with other countries, achieving significant cost savings and faster patent grant for our clients. We expect our clients to achieve similar cost savings as a result of the pilot PPH program with China.
Under the PPH, an applicant receiving a ruling from SIPO that at least one claim in an application is patentable may request that CIPO fast-track the examination of corresponding claims in corresponding applications at CIPO. Similarly, if CIPO determines that at least one claim is patentable, the applicant may request accelerated processing of corresponding applications filed at SIPO.
There is no official fee to request fast-track examination under the PPH beyond the usual examination fee that applies to applications.
In addition to China, CIPO currently has an ongoing PPH agreement with the United States Patent and Trademark Office of indeterminate length and pilot agreements with a number of other countries, including Japan, Germany and Korea. CIPO has also instituted PPH pilot projects based on prior Canadian or US PCT examination results.
According to statistics maintained by CIPO, PPH applications have far shorter wait times for examination and receive fewer office actions. PPH applications are also granted at a higher rate.
Time from request for fast track examination to first office action. On average, CIPO is issuing a first Examiner's Report for a PPH application only 2.2 months after the PPH request is made. The overall average time to issuance of a first Examiner's Report for all applications is 18.9 months. (The average pendency to first Examiner's Report for all applications can vary from 18 to 32 months depending on subject matter.)
Time from request for fast track examination to final decision. The average pendency of a PPH application from application to allowance (5.1 months) is considerably shorter than the overall average pendency for all applications (37.8 months). One of Smart & Biggar’s clients recently received an allowance only 15 days after filing a request for expedited examination under the PPH.
Average number of office actions. The average number of office actions for PPH applications (0.6) is less than half that of all applications combined (1.6).
Allowance rate without office action. An incredible 45% of PPH applications proceed to allowance without the issuance of an Examiner's Report (the so-called “first office action allowance”). By comparison, the average number of applications overall that proceed directly to allowance without the issuance of an Examiner's Report is only 5.6%.
Grant rate. Grant rates are also significantly higher for PPH applications (93%) as compared to all applications combined (71%).
Other measures for expedited examination. Other measures for expediting examination of a Canadian patent application include the use of Special Orders for expedited examination upon payment of a government fee or in connection with patent applications relating to green technology.
We expect that the same phenomenal results will be achieved as a result of the pilot PPH program between China and Canada.
In addition to the PPH agreement, SIPO will give Canada's patent examiners access to China's Traditional Chinese Medicine Database, a useful tool in the fight against bio-piracy.
Further information. Smart & Biggar has extensive experience using the PPH program to achieve cost savings for patent prosecution expenses in Canada without sacrificing patent quality. To learn more about the PPH pilot program between Canada and China, please contact James Jun Pan (jjpan@smart-biggar.ca).
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.