A new Patent Prosecution Highway (PPH) pilot agreement between
the Canadian Intellectual Property Office (CIPO) and the European
Patent Office (the EPO) came into effect on January 6, 2015. The
pilot will last for a period of three years, ending on January 5,
2018, and aims to accelerate patent examination for applicants who
file in both CIPO and the EPO.
The PPH refers to a series of bilateral agreements between
patent offices around the world to allow applicants to fast-track
examination of one patent application in a PPH jurisdiction,
provided the applicant has a positive result from a corresponding
application in a PPH partner jurisdiction.
Under the new CIPO-EPO PPH pilot agreement, applicants whose
patent claims have been found to be allowable by either the EPO or
CIPO may request accelerated examination of their corresponding
application that is pending before the other office.
A PPH request to CIPO based on an earlier examined EPO patent
application must satisfy certain criteria, including:
The Canadian application was filed or has entered the national
phase on or after January 6, 2015 (i.e. on or after the date the
CIPO-EPO PPH pilot agreement came into effect).
The applications before CIPO and the EPO have the same earliest
filing date. The same earliest filing date may be the priority date
or filing date of a corresponding national application filed with
the EPO, or a corresponding Patent Cooperation Treaty (PCT)
international application for which the EPO has been an
International Search Authority (ISA) and/or International
Preliminary Examining Authority (IPEA) under the PCT.
Substantive examination of the Canadian application for which
participation in the PPH is requested has not begun. Substantive
examination is considered to have begun when CIPO issues a first
The corresponding application must have been substantively
examined by the EPO, including consideration of novelty and
inventive step and have at least one claim indicated by the EPO to
be allowable. Claims determined to be novel, inventive and
industrially applicable by the EPO when acting as the ISA and/or
IPEA are also considered to be allowable under the PPH
Various work products from the EPO may be used to demonstrate to
CIPO that claims examined by the EPO are considered allowable.
These eligible work products from the EPO include an extended
European search report (EESR), an examination report, and a
communication under Rule 71(3) EPC (Intention to Grant). When the
EPO acts as the ISA and/or IPEA, eligible work products from the
EPO include a written opinion of the ISA, a written opinion of the
IPEA, and an International Preliminary Report on Patentability
The PPH agreement between CIPO and the EPO provides interesting
opportunities for fast-tracking patent applications that are filed
with both CIPO and the EPO. For instance, applicants may initiate
expedited examination in Canada by requesting accelerated
examination under paragraph 28(1)(a) of the Patent Rules,
or by taking advantage of the EPO's PACE program. After
receiving an early allowance under one of these initial accelerated
procedures, the CIPO-EPO PPH agreement can be relied upon to
accelerate examination in the other jurisdiction.
Accordingly, under the new CIPO-EPO PPH agreement, applicants
now have yet another option to accelerate examination of their
Canadian and European applications to achieve consistent patent
rights in a timely fashion.
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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