A Patent Prosecution Highway (PPH) program between the Canadian Intellectual Property Office (CIPO) and the United States Patent and Trademark Office (USPTO) was opened for a test drive on January 28, 2008. While the program is in its trial period, there are no government fees for filing a request.
The trial period will end on January 28, 2009, however, the program is expected to continue and government fees are likely to be charged thereafter. Therefore, it is a good time to benefit from the program that, so far, has been very efficient and appreciated. CIPO recently conducted a survey concerning the program and is now examining the results in order to determine whether the PPH will continue at the end of its one-year trial and to make any necessary adjustments.
An applicant wanting to take advantage of the program for a Canadian application must file a request for accelerated examination under the PPH, a completed PPH request form and relevant supporting documents including a copy of the claims found to be allowable by the USPTO. A patent examiner will consider the request and, if all requirements of the program are met, an accelerated examination will be conducted. These requirements are considerably easier to meet than those at the USPTO for obtaining an accelerated examination.
Thus far, the PPH has tremendously accelerated allowance of Canadian claims. In fact, using the program can considerably reduce the period of time before receiving the first office action. Generally, this period lasts 24 to 36 months as opposed to the one to three months experienced via the PPH program.
Alternatively, if an applicant is not satisfied with the scope of the US allowed claims and would like to rapidly obtain the Canadian patent, it is always possible to file a request for accelerated examination in Canada under Rule 28 and expect to quickly obtain allowance of broader claims. In fact, the Canadian test for non-obviousness is arguably easier to satisfy than the corresponding US test. Such a request, upon payment of the standard $500 fee, is usually granted automatically (if the application is open to public inspection and if the request specifies that failure to advance examination could result in prejudice to the applicant’s rights) and can be filed at any time, regardless of whether US claims have been allowed or not. Such a procedure can be seen as a formality, which contrasts considerably with requesting accelerated examination at the USPTO. Usually, a first office action is issued within three months of the filing of such a request.
Thus, there are many ways to get a speedy allowance in Canada.