The Patent Prosecution Highway (PPH) is a well established initiative that provides a means of prioritizing examination of patent applications, under certain conditions, where an indication of allowance has been made. A patent application whose claims have been determined to be patentable in the Office of First Filing (OFF), is eligible to go through an accelerated examination in the Office(s) of Second Filing (OSF), upon the applicant’s request.
Under the current PPH scheme, the OFF must provide its examination results before any PPH partner offices accept PPH requests. Because of this, if examination results become available from the OSF prior to those of the OFF, applicants are restricted from making a PPH request in the OSF. Thus applicants are unable to exploit favourable examination results from an OFF for the purpose of accelerated prosecution under the PPH in the OSF.
In order to further promote the use of PPH and make it more user friendly, a number of PPH partner offices have agreed and now implemented an enhancement to the PPH called the “MOTTAINAI Pilot”, effective July 15, 2011. Participants in the pilot program include the JPO (Japan), USPTO (USA), UK-IPO (UK), CIPO (Canada), IP Australia (Australia), NBPR (Finland), ROSPATENT (Russia) and SPTO (Spain).
The PPH MOTTAINAI Pilot will ease the requirements for requesting patent examinations. The pilot program allows an applicant to make PPH requests at the Office of Later Examination (OLE) by using the examination results of the Office of Earlier Examination (OEE) regardless of where an application is first filed, provided that the OEE and OLE have a PPH MOTTAINAI agreement. In accordance with CIPO’s one-year pilot project with the intellectual property offices of NBPR, JPO, SPTO and the USPTO, a PPH request can be made via these PPH partner offices. The pilot project will end on July 14, 2012, but may be extended if found to be effective.
In addition, as of July 15, 2011, fewer documents and translations will be required when submitting a PPH request relating to any of CIPO's existing PPH agreements. As well, a uniform definition of claim correspondence will be used by all PPH network offices, a move that will reduce differences in procedure among PPH partner offices and simplify the PPH request process.
Where these and all other requirements are met, the applicant can make a request to CIPO under the PPH MOTTAINAI program, or to one of CIPO's PPH partner offices, for accelerated examination of a corresponding application. Please be reminded that Canadian patent applications will be examined in accordance with the Canadian Patent Act and Patent Rules.
The initiatives outlined above will allow applicants to obtain corresponding patents faster and more efficiently at CIPO or at one of CIPO's PPH partner offices. The hope is that the PPH becomes less of a one way street and more like a multi-lane highway decreasing applicants travel time to the ultimate destination of an issued patent.