The Patent Prosecution Highway (PPH) is a route available to Canadian patent applicants for accelerating prosecution of those applications for which a corresponding foreign patent application has already been deemed allowable. In order to be eligible for inclusion in the PPH, a Canadian patent application must have a corresponding patent application that has been examined and deemed allowable in a jurisdiction having a PPH agreement with Canada. There are specific formalities that must be met for acceptance into the PPH, but there is no fee for requesting advanced examination under the PPH projects in Canada.
Recently the Canadian Intellectual Property Office announced that the PPH pilot project agreements between Canada and Denmark, Japan and Korea, which began two years ago, have been extended an additional two years until September 30, 2013. The additional time will be used by the respective patent offices to evaluate whether these PPH projects should be made permanent.
Pilot projects between Canada and Spain, Finland and Germany which began in October 2010 remain ongoing. The PPH pilot project with the United States has matured and will be active for an indeterminate period. Early data on the timeline of applications filed under these PPH pilot project reports allowance of 42.5% of applications prior to a first Office Action, with 32% of PPH requests that received a first Office Action in condition for allowance after correction of minor description informalities. Additionally, the reported average wait time to first action after request for examination was 1.5 months for a PPH application compared to approximately 24 months for a non-PPH application. This translates into accelerated allowance of at least 1-2 years compared to non-PPH applications.
The benefits of the PPH programs have been realized by many patent applicants in Canada. For example, the PPH can result in accelerated patent issuance, consistent claims across jurisdictions, high allowance rates and it has the potential for significantly reducing prosecution costs. For these reasons, we have encouraged our clients to consider the PPH route. However, the PPH is not the best route in all cases. Before jumping on to the PPH, we recommend that applicants take time to review the foreign allowed claims with their Canadian patent agent to ensure that the foreign claims are suitable for prosecution in Canada.
Stephanie White is a Registered Patent Agent with the Canadian Patent Office and with the United States Patent and Trademark Office. Erin Engelhardt specializes in the areas of pharmaceutics, biotechnology and chemistry, with expertise in drug design and development, drug delivery, metabolism, therapeutics and bio-organic chemistry.
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