Canadian Intellectual Property Office ("CIPO")
announced that effective July 29, 2013, all of CIPO's PPH
agreements will adopt the Mottainai Model. A patent applicant
now can accelerate the examination of its patent application in
Canada using PPH subject to much less restriction.
Patent Prosecution Highway ("PPH") is a bi-lateral
program between two cooperating patent offices that allows one
cooperating office (the "second" office) to use the
examination results obtained at the other cooperating office (the
"first" office), thus accelerating the examination
process of a patent application at the second office. The PPH
program can be very useful in that it can help accelerate
the examination at the second office, and thus reduce the pending
period significantly. According to CIPO1, the pendency
of a patent application at CIPO can be reduced from the typical 34
to 53 months (from request to final allowance) to a much shorter 5
to 7 months. In addition, the average number of office actions is
also reduced significantly. This represents very significant time
and cost savings.
However, the conventional PPH program requires the applicant to
both file and examine the patent application first at the same
office and then take the examination results at the first office to
the second office. That the first office must be the same office
where both the filing and the examination are first carried out can
be a severe restriction. For example, an applicant may file a
patent application in Country A first (for example, as a priority
application), but have obtained examination results and allowance
(i.e., approval) in Country B first, both outside Canada. This is a
very common scenario. PPH would not be available under conventional
PPH in this scenario.
Mottainai Model is proposed to address this issue. Under
Mottainai Model, sometimes also known as PPH 2.0, it does not
matter where the patent application was filed first. In the above
scenario, even if the application in Country B is not the earliest
counterpart application (i.e., Countries A and B are different),
the examination results in Country B still can be used as the basis
for a PPH request in Canada, the "second office". The
office in Country A is not required to be the "first
office" where the application is first examined.
Prior to this announcement, Canada already has entered
into Mottainai PPH agreements with the patent offices of
Finland, Japan, Spain, the United Kingdom and the United States.
This is now extended to all countries with which Canada has PPH
agreements, which include Denmark, Germany, Israel, and Korea.
Thus, if an applicant has patent applications filed in Canada and
any of these PPH countries, the applicant may request that the
examination in Canada be accelerated under PPH by utilizing the
examination results in one of these countries, irrespective of
where the application was first filed. PPH program at CIPO is still
at its pilot stage. Currently, CIPO charges no fees for filing
a PPH request, though regular examination fees still
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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