Canada: Canada To Participate In A New Global PPH Pilot Program

On January 6, 2014, a new Global Patent Prosecution Highway (GPPH) pilot program will begin to fast-track examination of eligible patent applications between participating countries.

The Canadian Intellectual Property Office (CIPO) and 12 other patent offices are part of the GPPH pilot program. The participating patent offices are as follows:

IP Australia (IP Australia)
Canadian Intellectual Property Office (CIPO)
Danish Patent and Trademark Office (DKPTO)
National Board of Patents and Registration of Finland (NBPR)
Japan Patent Office (JPO)
Korean Intellectual Property Office (KIPO)
Nordic Patent Institute (NPI)
Norwegian Industrial Property Office (NIPO)
Portuguese Institute of Industrial Property (INPI)
Russian Federal Service for Intellectual Property (ROSPATENT)
Spanish Patent and Trademark Office (SPTO)
United Kingdom Intellectual Property Office (IPO)
United States Patent and Trademark Office (USPTO)

It is possible for additional patent offices to join the GPPH pilot program in the future.

Under the GPPH pilot program, a request for accelerated examination can be made at any participating office based on a favourable work product, including a PCT work product, from any one of the other participating offices. A favourable work product may be, for example, a notice of allowability or, in the case of the PCT, a determination that one or more claims are novel, inventive and industrially applicable.

The eligibility requirements of the GPPH pilot program are similar to those of other existing PPH programs. For example, to be eligible for accelerated examination under the GPPH pilot program, the office of earlier examination and the office of later examination must have the same earliest date (priority or filing date), the office of earlier examination must have found at least one claim to be allowable, and all claims presented for examination under the GPPH pilot program must sufficiently correspond to one or more of the claims found allowable by the office of earlier examination. The details of all such eligibility requirements are available at: http://www.jpo.go.jp/ppph-portal/globalpph.htm.

Where two participating offices have a pre-existing bi-lateral PPH agreement, the GPPH pilot will take precedence over the bi-lateral agreement for the duration of the pilot.

The GPPH pilot program and Canada

Fast-tracking examination under PPH programs in Canada has been a phenomenal success and has positioned Canada as a highly cost-effective jurisdiction in which to procure patent protection with speed and efficacy. The GPPH pilot program will make it even easier for patent applicants to realize such benefits in Canada, as the GPPH pilot program expands the number of countries that can be used as an office of earlier examination for the purposes of fast-tracking examination in Canada. For example, the GPPH pilot program agreement includes IP Australia (IP Australia), the Nordic Patent Institute (NPI), the Norwegian Industrial Property Office (NIPO) and the Russian Federal Service for Intellectual Property (ROSPATENT), which did not have previous PPH agreements with Canada.

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. The following are some statistics from CIPO from earlier this year:

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 is 18.9 months.

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).

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%).

Smart & Biggar has filed hundreds of requests for accelerated examination under the PPH based on agreements with other countries, achieving significant cost savings and faster patent grant for our clients. We expect our clients to achieve similar cost savings as a result of the GPPH pilot program.

Strategy considerations in view of the GPPH pilot program

Unlike existing bi-lateral PPH agreements, the GPPH pilot program is an agreement between several patent offices around the world, and additional patent offices may join in the future. Therefore, patent applicants would be well advised to reconsider their global patent prosecution strategy in light of the GPPH pilot program.

For example, using the GPPH pilot program, substantive patent examination could first be requested and conducted in the participating patent office preferred by the applicant, and if the examination leads to a favourable allowance, accelerated examination could then be conducted under the GPPH pilot program for all other participating countries of interest. Substantive examination can be deferred in many countries, such as in Canada, which makes this strategy more easily achievable.

For the GPPH pilot program, Canada may also be a good choice as the venue in which to conduct the first substantive examination because early examination may be obtained by means other than the PPH. For example, an applicant can usually obtain a special order for expedited examination upon making a request and submitting the required fee.

A few notable exceptions

The five largest intellectual property offices in the world (known as "the IP5") are the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the State Intellectual Property Office of the People's Republic of China (SIPO) and the United States Patent and Trademark Office (USPTO).

Three of these intellectual property offices are participating in the GPPH pilot program. Unfortunately, the EPO and SIPO are currently not part of the GPPH pilot program. However, as mentioned above, it is possible for these (and other) offices to join the GPPH pilot program in the future.

Additionally, the EPO and SIPO currently have bilateral PPH agreements with some countries, which presumably can be used in addition to the GPPH pilot program. For example, a PPH pilot program currently exists between the Canadian Intellectual Property Office (CIPO) and SIPO.

Conclusion

For patent applicants who file in multiple countries, the GPPH pilot program should hopefully result in faster patents at a lower overall cost. Consideration should be given as to whether such a program would be of benefit to your global patenting strategy.

If you have any questions regarding the above, please do not hesitate to contact a member of our firm's Patents group.

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.

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