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
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
Clark Holden is a Registered Canadian Patent
Agent (2005) with extensive knowledge in patent drafting, freedom
to operate opinions, both domestic and foreign patent prosecution
matters and Canadian industrial design practice. Stephanie
White is a Registered Patent Agent with the Canadian
Patent Office and with the United States Patent and Trademark
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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