In a key development, the Canadian Intellectual Property Office
(CIPO) and the European Patent Office (EPO) have announced that they have signed a Memorandum
of Understanding to establish a Patent Prosecution Highway (PPH)
pilot program beginning January 2015. This bilateral agreement was
signed at the 54th annual World Intellectual Property Office (WIPO)
General Assemblies in Geneva.
The pilot program will be based on both nationally filed and
Patent Cooperation Treaty work products. Under the program, patent
applicants whose claims have been found to be patentable by either
CIPO or the EPO can ask for accelerated processing of their
corresponding applications that are pending before the other
This new agreement between CIPO and the EPO significantly
broadens the availability of expedited prosecution under the PPH
for applicants in Canada. Canada already has PPH partnerships
with a number of intellectual property offices through the Global
Patent Prosecution Highway pilot program, including the United
States Patent and Trademark Office (USPTO), the Japanese Patent
Office (JPO) and the Korean Intellectual Property Office (KIPO).
Canada also has bilateral PPH agreements with several intellectual
property offices including the German Patent and Trade Mark Office
(DPMA) and the State Intellectual Property Office of the
People's Republic of China (SIPO).
According to statistics maintained by CIPO, PPH applications
have far shorter wait times for examination and receive fewer
office actions. PPH applications are also granted at a higher
At present, there are no government fees associated with a PPH
request to CIPO beyond the usual examination fee that applies to
all applications. Thus, the new PPH pilot program between CIPO and
the EPO makes Canada an even more cost-effective jurisdiction for
obtaining patent protection.
Smart & Biggar has extensive experience using the PPH
program to achieve cost savings for patent prosecution expenses in
Canada without sacrificing patent quality. To learn more about the
PPH pilot program between Canada and the EPO, please 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
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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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