The Canadian Intellectual Property Office (CIPO) extended the
Patent Prosecution Highway (PPH) to China by beginning a pilot
project on September 1, 2013 between CIPO and the State
Intellectual Property Office of the People's Republic of China
(SIPO). The pilot project will run for a period of two years,
ending on August 31, 2015.
CIPO has already started several PPH programs (pilot –
Patent Cooperation Treaty, Spain, Germany, Finland, Korea, Japan,
Germany, UK and Denmark; indeterminate – United States), and
the Chinese one is its latest addition.
The PPH initiative provides a means of prioritising the
examination of patent applications under certain conditions, where
an indication of patentable subject matter has been made. The
indication of patentable subject matter must be made for at least
one claim. In the partnership with the SIPO, CIPO will consider as
patentable subject matter those claims of the Chinese application
that have been allowed as indicated by the Chinese notification of
grant letter. Thus, prosecution in China must be finished and the
patent granted before a request for acceleration in Canada can be
initiated. The reverse is also true: SIPO will consider as
patentable subject matter those claims of the Canadian application
that have been allowed, and the Chinese application would be
accelerated under the PPH after granting of the Canadian
At present, CIPO will process requests for advanced prosecution
under the SIPO PPH free of charge.
The requirements for accelerated examination in Canada under the
CIPO-SIPO PPH are as follows:
The Canadian application for which participation in the PPH is
requested and the corresponding Chinese application must be
corresponding applications – that is, they must have the same
earliest date (whether this is a priority date or a filing
At least one claim common between the Canadian application and
the Chinese application must have been allowed in China.
All claims on file at CIPO, as originally filed or as amended,
for examination under the PPH must sufficiently correspond to one
or more of those claims allowed by SIPO. (An explanation of the
notion of "sufficient correspondance" is provided on
The Canadian application must be open to public
CIPO must have received a request for examination, but not
begun examination of the application.
In order to file a request for accelerated examination in
Canada under the CIPO-SIPO PPH, the applicant must provide:
A completed PPH request form (downloadable from CIPO's
The Chinese office actions (CIPO will retrieve them; if it
cannot, CIPO will request the applicant to provide a copy).
The claims of the Chinese granted patent.
A completed claim correspondence table showing the relationship
between the claims of the Canadian application and the allowed
Chinese claims (an example of such table is provided on CIPO's
The request for examination under the PPH may be made by mail,
fax or electronically via the Industry Canada website. All
subsequent correspondence with CIPO must be clearly identified as
relating to a PPH application, to ensure that it is correctly
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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