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.
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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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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