Canadian Intellectual Property Office ("CIPO")
recently announced another new PPH program, which added one more
route for applicants to accelerate patenting process in Canada.
This new PPH program became effective on January 31, 2013 and will
end on January 30, 2015.
PPH (Patent Prosecution Highway) is a process between patent
offices that aims at reducing duplicative efforts at patent
offices, thus helping speed up the examination process and reducing
the cost of obtaining a patent. Under PPH, if an applicant receives
a ruling from one PPH patent office that at least one claim is
patentable, the applicant may request a PPH partner patent office
where a corresponding patent application is filed to fast-track the
examination of the corresponding application, utilizing the
examination result at the first PPH patent office. This often
significantly shortens the time required to obtain a patent at the
PPH partner patent office.
For example, if an applicant receives a ruling from the United
States Patent and Trademark Office (the "USPTO") that at
least one claim of its U.S. application is allowed and the
applicant also has a corresponding Canadian patent application that
has not been examined, the applicant will be able to request CIPO,
which has a PPH agreement with the USPTO, to fast-track the
examination of the corresponding claim(s) in Canada. Similarly, an
applicant may also request the USPTO to fast-track the examination
of its U.S. application if at least one claim of the corresponding
Canadian application has been found allowable. PPH generally
provides the benefits of greater allowance rate (e.g., the
allowance rate for non-PPH applications at the USPTO is less than
50 percent while more than 90 percent of PPH cases at the USPTO are
allowed) and speedy examination (e.g., average pandency at CIPO
reduced from 38.8 months to 5.3 months).
The new PPH program announced by CIPO is a PCT-PPH program that
will enable applicants to fast-track examination of their patent
applications in Canada based on the examination of their
corresponding PCT applications. However, as the agreement is with
the USPTO, only PCT applications examined by the USPTO as the
International Search Authority ("ISA") or International
Preliminary Examination Authority ("IPEA") will be
eligible under this new USPTO PCT-PPH program. Prior to the
addition of USPTO PCT- PPH, CIPO already had a pilot PCT-PPH
program that applied to PCT applications examined by CIPO as
ISA/IPEA. This PCT-PPH (CIPO ISA/IPEA) program now is
In addition to these two PCT-PPH programs, CIPO also has
(non-PCT) PPH programs with patent offices in the United States,
several European countries (Germany, United Kingdom, Spain,
Denmark, and Finland), Israel, Japan and Korea.
Using these PPH programs could significantly accelerate the
patenting process in Canada and at the same time reduce the
prosecution costs. Similarly, to accelerate the patent examination
processes in these countries, an applicant may also consider
obtaining allowance of the corresponding Canadian application first
and then fast-tracking the examinations in these countries through
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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