A new Patent Prosecution Highway (PPH) pilot agreement between the Canadian Intellectual Property Office (CIPO) and the European Patent Office (the EPO) came into effect on January 6, 2015. The pilot will last for a period of three years, ending on January 5, 2018, and aims to accelerate patent examination for applicants who file in both CIPO and the EPO.

The PPH refers to a series of bilateral agreements between patent offices around the world to allow applicants to fast-track examination of one patent application in a PPH jurisdiction, provided the applicant has a positive result from a corresponding application in a PPH partner jurisdiction.

Under the new CIPO-EPO PPH pilot agreement, applicants whose patent claims have been found to be allowable by either the EPO or CIPO may request accelerated examination of their corresponding application that is pending before the other office.

A PPH request to CIPO based on an earlier examined EPO patent application must satisfy certain criteria, including:

  • The Canadian application was filed or has entered the national phase on or after January 6, 2015 (i.e. on or after the date the CIPO-EPO PPH pilot agreement came into effect).
  • The applications before CIPO and the EPO have the same earliest filing date. The same earliest filing date may be the priority date or filing date of a corresponding national application filed with the EPO, or a corresponding Patent Cooperation Treaty (PCT) international application for which the EPO has been an International Search Authority (ISA) and/or International Preliminary Examining Authority (IPEA) under the PCT.
  • Substantive examination of the Canadian application for which participation in the PPH is requested has not begun. Substantive examination is considered to have begun when CIPO issues a first office action.
  • The corresponding application must have been substantively examined by the EPO, including consideration of novelty and inventive step and have at least one claim indicated by the EPO to be allowable. Claims determined to be novel, inventive and industrially applicable by the EPO when acting as the ISA and/or IPEA are also considered to be allowable under the PPH criteria.

Various work products from the EPO may be used to demonstrate to CIPO that claims examined by the EPO are considered allowable. These eligible work products from the EPO include an extended European search report (EESR), an examination report, and a communication under Rule 71(3) EPC (Intention to Grant). When the EPO acts as the ISA and/or IPEA, eligible work products from the EPO include a written opinion of the ISA, a written opinion of the IPEA, and an International Preliminary Report on Patentability (IPRP).

The PPH agreement between CIPO and the EPO provides interesting opportunities for fast-tracking patent applications that are filed with both CIPO and the EPO. For instance, applicants may initiate expedited examination in Canada by requesting accelerated examination under paragraph 28(1)(a) of the Patent Rules, or by taking advantage of the EPO’s PACE program. After receiving an early allowance under one of these initial accelerated procedures, the CIPO-EPO PPH agreement can be relied upon to accelerate examination in the other jurisdiction.

Accordingly, under the new CIPO-EPO PPH agreement, applicants now have yet another option to accelerate examination of their Canadian and European applications to achieve consistent patent rights in a timely fashion.