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 time are:

  • IP Australia;
  • 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):

  1. 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 date).
  2. The OEE has found at least one claim in the corresponding application to be allowable.
  3. The claims in the Canadian application sufficiently correspond to the allowable claim.
  4. Examination has been requested, either at the time of the GPPH request or previously, but CIPO has not begun examination of the application.
  5. 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 program.

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 Office.

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