The Canadian Intellectual Property Office ("CIPO") and
16 other intellectual property offices have partnered in a new
Global Patent Prosecution Highway (GPPH) program. The program
launched on January 6, 2014.
The GPPH program allows patent applicants to fast-track the
examination at one office if a corresponding application receives
positive examination results at any of the other participating
offices. Through the sharing of examination results, the program
gives rise to efficiencies between the offices, and will be
attractive to Canadian applicants who file internationally and are
interested in obtaining corresponding patents in other countries
faster and more efficiently.
By way of example, many Canadian companies and individuals
having a North American focus will routinely file only in the U.S.
and Canada. Using the GPPH program, these applicants can expedite
examination of a Canadian application once they receive a Notice of
Allowance from the USPTO in regard to a corresponding U.S.
application. This strategy can now be extended for applicants
interested in obtaining protection internationally. For example,
the favourable USPTO work product can also be used to accelerate
examination in other markets of interest, including, for example,
Australia, Japan, Korea and the United Kingdom.
Furthermore, the GPPH program improves Canada's position as
an efficient and cost effective jurisdiction, and should encourage
foreign applicants who do not regularly file in Canada to consider
adding Canada to their portfolios.
Aside from CIPO, the other participating offices at the present
the Danish Patent and Trademark Office;
the National Board of Patents and Registration of Finland;
the Hungarian Intellectual Property Office;
the Icelandic Patent Office;
the Israel Patent Office;
the Japan Patent Office;
the Korean Intellectual Property Office;
the Nordic Patent Institute;
the Norwegian Industrial Property Office;
the Portuguese Institute of Industrial Property;
the Russian Federal Service for Intellectual Property;
the Spanish Patent and Trademark Office;
the Swedish Patent and Registration Office;
the United Kingdom Intellectual Property Office; and
the United States Patent and Trademark Office.
Additionally, CIPO has active PPH agreements, separate from the
GPPH program, with:
the State Intellectual Property Office of the People's
Republic of China;
the German Patent and Trade Mark Office; and
the Mexican Institute of Industrial Property.
To be eligible, a patent application must satisfy several
requirements. The following summarizes the requirements for
accelerating the examination of a Canadian application (similar
requirements apply to foreign applications requesting the GPPH
program in the other offices):
The Canadian application and the corresponding application in
the other "office of earlier examination" (OEE) share the
same earliest date (i.e. the filing date or the priority
The OEE has found at least one claim in the corresponding
application to be allowable.
The claims in the Canadian application sufficiently correspond
to the allowable claim.
Examination has been requested, either at the time of the GPPH
request or previously, but CIPO has not begun examination of the
The Canadian application is open to public inspection.
Applicants wishing to take advantage of the program must file
with CIPO a completed GPPH request form and relevant supporting
documents. The supporting documents include copies of the OEE's
work product, a claim correspondence table, and additional
documents may be required depending on the particular
circumstances. Presently there is no government fee for using the
It should be borne in mind that applications accepted into the
GPPH program are still subject to a full examination by each office
to ensure compliance with its domestic patent laws. As such, a
determination by one office that the claims of an application are
allowable will serve as no guarantee that other offices will reach
the same conclusion. Nevertheless, in many cases, the program will
be useful to streamline examination and result in issued patents
being obtained more quickly and at less cost.
Further details are available from CIPO and at the PPH Portal maintained by the Japanese Patent
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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