Publication
title
Canada and the United States Launch a Joint Pilot Program for Accelerating Patent Examinations
DATE
January 28, 2008
On January 28, 2008, the Canadian Intellectual Property Office (CIPO) and the United States Patent and Trademark Office (USPTO) will launch a joint pilot program aimed at creating a fast track examination process for patent applications. This pilot program, referred to as the "Patent Prosecution Highway" or "PPH", may be of interest to applicants having a patent application in Canada and a corresponding one in the United States protecting the same invention.
The purpose of the PPH program is to accelerate examination of a patent application in one of the two countries when an official notification that some of the claims have been found allowable is received for the patent application in the other country. The PPH program will be tested for a period of one year and may be extended thereafter, depending on the interest of applicants and the benefits gained by each patent office. There are currently no government fees associated with requesting an accelerated examination under the PPH program.
REQUIREMENTS FOR A REQUEST UNDER THE PPH PROGRAM IN CANADA
Applicants having a Canadian patent application and a corresponding one in the United States for the same invention can submit a request for accelerated examination to CIPO if:
- The corresponding US case is an issued patent or a patent application for which the applicant has received an indication from the USPTO that at least some of the claims are allowable
- The examination of the Canadian application has not yet started
- The Canadian application is open to public inspection
- The Canadian application claims priority over the corresponding US case[1]
- All claims in the Canadian application submitted for accelerated examination correspond in scope to one or more of the claims allowed in the United States.
A voluntary amendment to the Canadian application can be filed concurrently with the PPH request, if required.
The usual Request for Examination must be filed along with the PPH request, unless the Request for Examination was filed earlier in the prosecution of the Canadian application, and the Canadian application must still meet all requirements under the Patent Act and the Patent Rules in force in Canada.
The PPH request form must be submitted to CIPO with copies of the following documents:
- Office action(s) issued during prosecution of the corresponding US application
- The claims allowed by the US Examiner
- A completed claim correspondence table showing the relationship between the claims submitted for examination in the Canadian application and the allowed US claims.
It is possible to ask CIPO to obtain the first two items if they are available over the Internet on the USPTO Public PAIR system.
ANTICIPATED BENEFITS FOR APPLICANTS
The PPH program is designed to significantly accelerate the examination of patent applications for applicants having corresponding cases in both countries and where the claim coverage obtained in one country is believed to be satisfactory for the other country. It may thus be of interest for some applicants. However, various aspects of the PPH program remain to be evaluated by the patent profession.
The PPH program can also be used to expedite examination of a US patent application where the applicant has a corresponding Canadian case allowed by CIPO. The requirements in the United States are slightly different from those in Canada, so a request under the PPH program for accelerated examination of a US application should first be discussed with a US patent attorney or agent. The USPTO also has other similar pilot programs currently active with other countries around the world.
Demian Barbas
Sébastien Clark
Nicolas Pellemans
[1] A corresponding USPTO application means either a USPTO national application on the basis of which the CIPO application referred to claims priority or a USPTO application that is a member of the same patent family (e.g. a continuation of a US application on the basis of which priority is claimed). A priority claim to a US provisional application over which a US non-provisional application and its corresponding Canadian application claim priority is not mentioned by CIPO as meeting the requirements.
The purpose of this document is to provide information as to developments in the law. It does not contain a full analysis of the law nor does it constitute an opinion of Ogilvy Renault LLP or any member of the firm on the points of law discussed.
© Ogilvy Renault LLP 2008 - All Rights Reserved
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Nicolas Pellemans
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Dominique Pomerleau
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