The Canadian Intellectual Property Office (CIPO) and the US Patent and Trademark Office (USPTO) have announced the Canada-US Patent Prosecution Highway. This pilot programme is intended to expedite patent examination in both countries. 

Under the programme, it is possible to have an application advanced out of turn for examination where there is at least one claim that has been indicated as allowable by one of the two patent offices. This pilot programme is scheduled to run from January 28 2008 to January 28 2009 and may be extended for an additional year for further evaluation. 

In general, if one of the patent offices indicates that at least one claim in an initial application is allowable, the other patent office may grant advanced examination of a corresponding application filed in the other patent office, if certain documents are filed. There are some exceptions to this generalization and eligibility for the programme is subject to priority claiming requirements which differ somewhat in each country. CIPO is charging no additional fee for advanced examination during the pilot programme, although a petition fee is required by the USPTO. Advanced examination generally means advancing the application to the front of the examiner’s queue for immediate examination, allowing the applicant to bypass examination backlogs. In Canada, examination backlogs are usually at least one year and often exceed three years, depending on the field of technology. 

To qualify for advanced examination, all of the claims must correspond (ie, be the same or similar in scope) or be amended to correspond to the claims that have been indicated to be allowable in the initial application. This may have significant implications for both Canadian and US applications that participate in this programme. To decide whether it is desirable for a Canadian application claiming priority from a US application to enter the programme, the US prosecution should be carefully considered. In some situations acceptable prosecution strategies in the United States may be detrimental in Canada. Differences between the countries’ respective double-patenting doctrines give rise to one such example.

However, strategies are available to mitigate some of these potential problems. For example, in some cases where multiple continuing applications are pending in the United States, it may be desirable to defer the request for examination in Canada until all of the desired continuing applications have been allowed in the United States. More generally, the suitability of this programme for Canadian applications should be evaluated on a case-by-case basis, having regard to the technology and subject matter of the application and the state of prosecution in the United States. 

Conversely, Canada’s unity of invention standard, which is more permissive than US restriction practice, could potentially streamline US prosecution by reducing the number of divisional or continuation applications, if the USPTO gives deference to CIPO’s decision to permit multiple claim sets to coexist in the same application. However, once again the Canadian prosecution should be carefully considered before deciding to request advanced examination of the US application. 

One of the requirements for entry into the programme in the United States is to provide copies of all the office actions issued during the Canadian prosecution. As such, these documents will officially become part of the USPTO file wrapper, resulting in a distinct possibility that the Canadian prosecution history may give rise to prosecution history estoppel in the United States. Careful consideration of the prosecution history of the initial application is required before deciding whether the corresponding application in the other patent office should participate in the programme. In general, if early issuance of an application is commercially important, then this programme may provide a good opportunity to bypass lengthy examination backlogs. 

For further information on this topic please contact Graham JK McKinnon at Smart & Biggar/Fetherstonhaugh by telephone (+1 604 682 7780) or by fax (+1 604 682 0274) or by email ([email protected]).