The Patent Prosecution Highway (PPH) program has been a
phenomenal success in Canada and has positioned the country as a
highly cost-effective jurisdiction in which to procure patent
protection with speed and efficacy.
The fast-tracking of patent examination under the PPH can
realize significant cost savings for applicants without sacrificing
patent quality. Smart & Biggar/Fetherstonhaugh has filed
hundreds of requests for expedited examination under the PPH,
achieving significant cost savings for our clients.
According to statistics maintained by the Canadian Intellectual
Property Office (CIPO), PPH applications have far shorter wait
times for examination and receive fewer office actions. PPH
applications are also granted at a higher rate.
Time from PPH request to first office action.
On average, CIPO is issuing a first office action for a PPH
application only 2.2 months after the PPH request is made. The
overall average time to issuance of a first office action for all
applications (PPH and non-PPH) is 18.9 months. (The average
pendency to first office action for all applications can vary from
18 to 32 months depending on subject matter.)
Time from PPH request to final decision. The
average pendency of a PPH application from application to final
decision (5.1 months) is considerably shorter than the overall
average pendency for all applications (37.8 months).
One of our clients recently received an allowance only 15 days
after filing a request for expedited examination under the PPH.
Average number of office actions. The average
number of office actions for PPH applications (0.6) is less than
half that of all applications combined (1.6).
Allowance rate without office action. An
incredible 45% of PPH applications proceed to allowance without the
issuance of an office action. By comparison, the average number of
applications overall that proceed directly to allowance without the
issuance of an office action is only 5.6%.
Grant rate. Grant rates are also significantly
higher for PPH applications (93%) as compared to all applications
Patent Prosecution Highway program explained.
The PPH program promises a fast-tracked examination in Canada for
patent applicants who have obtained an indication of allowance in
an eligible country. There is no official fee to request fast-track
examination under the PPH beyond the usual examination fee that
applies to applications.
When requesting examination under the PPH, the claims of the
Canadian application must be amended to correspond to claims found
allowable in an eligible office of first filing or office of
earlier examination. To increase the likelihood of early allowance,
Canadian formal requirements can be addressed at the time of the
CIPO currently has an ongoing PPH agreement with the United
States Patent and Trademark Office of indeterminate length as well
as pilot agreements with these offices worldwide:
Danish Patent and Trademarks Office
German Patent and Trademarks Office
Japan Patent Office
Korean Intellectual Property Office
National Board of Patents and Registration of Finland
Spain Patent and Trademarks Office
United Kingdom Intellectual Property Office
CIPO has also instituted PPH pilot projects based on prior
Canadian or US PCT examination results.
Other measures for expedited examination. Other
measures for expediting examination of a Canadian patent
application include the use of Special Orders for expedited
examination upon payment of a government fee or in connection with
patent applications relating to green technology.
Further information. Smart &
Biggar/Fetherstonhaugh has extensive experience using the PPH
program to achieve cost savings for patent prosecution expenses in
Canada without sacrificing patent quality.
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
informational only and does not constitute legal or professional
advice. To obtain such advice, please communicate with our offices
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