The Canadian Patent Office (CIPO) is participating in a new one-year pilot project intended to increase the number of patent applications eligible for Canadian examination under the Patent Prosecution Highway (PPH). As of July 15, 2011, a PPH request at the Canadian Patent Office can be made based on existing PPH agreements with the United States (USPTO), Japan (JPO), Finland (NBPR), and Spain (SPTO), regardless of where an application is first filed. A PPH request may also be made at the United States (USPTO), Japan (JPO), Finland (NBPR), and Spain (SPTO) patent offices based on issued Canadian claims, regardless of where the application was filed first.
The PPH is an international initiative between participating patent offices to speed up the examination of patent applications through the sharing of information. Agreements have been established between participating patent offices to accelerate examination of an application with claims that “sufficiently correspond” to claims determined to be patentable by another patent office. The Canadian Patent Office first introduced the PPH into Canada in 2008. The PPH has been providing significant benefits to applicants including a first action within three months of the PPH request and higher grant rates. However, under the previous PPH scheme, access to the benefit of the PPH was limited to cases where claims were determined to be patentable by the patent office where the application was first filed (Office of First Filing - OFF). Applicants had to wait until the application was allowed in the OFF before using the PPH to accelerate examination of corresponding claims in other participating offices.
The new so-called “PPH Mottainai Pilot” eases access to the PPH as the earlier examining office is no longer restricted to the OFF. The Mottainai Pilot project involves eight countries, however only the United States, Japan, Finland, and Spain currently reciprocate with Canada. Under this new procedure, when claims of an application have been determined to be patentable by any other of the four reciprocating patent offices, the PPH may be used to accelerate the examination of corresponding claims at the Canadian Patent Office whether or not that office was the OFF. Similarly, the PPH may be used to accelerate examination of corresponding claims in other reciprocating offices based on issued Canadian claims, whether or not the Canadian office was the OFF.
The new one year pilot program runs from July 15, 2011, to July 14, 2012, and may be extended.
Now that access to the PPH as the earlier examining office is no longer restricted to the OFF, new prosecution strategies are possible. For example, in Canada it is possible to request “special order” examination of a Canadian application. A first action may be issued as early as a few months to a year. If CIPO eventually determines that the claims are patentable then the PPH may be used to accelerate examination of applications with corresponding claims at the reciprocating countries noted above, including the United States and Japan (also Finland and Spain). However, before taking advantage of the PPH, an applicant should be comfortable with the scope of the claims determined to be patentable and the quality of the examination conducted. The applicant must also bear in mind that patent offices are not bound by the decisions of an earlier examining office and may reach different conclusions on patentability. A good quality examination based on a thorough search will likely be more persuasive to other patent offices that subsequently examine applications with corresponding claims under the PPH.