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 combined (71%).
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 PPH request.
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 directly.
