Canadian - European Patent Office Patent Prosecution Highway
is Now Live
The Canadian Intellectual Property Office (CIPO) and the
European Patent Office (EPO) have started their Patent Prosecution
Highway (PPH) pilot program. The PPH can expedite examination of
certain Canadian patent applications after claims have been found
allowable in a corresponding European application. The CIPO PPH
request can also be based on a Patent Cooperation Treaty patent
application filed in Europe (PCT-EPO). CIPO does not charge an
additional fee for a PPH request. In Canada, CIPO often issues its
first examination report within three months after the PPH request
is approved. This is much faster than the usual pace of
examination, where the first examination report is not usually
received with a year after requesting examination. CIPO is
currently accepting PPH requests based on a corresponding EPO
application only for Canadian applications filed in January 2015 or
The program can also expedite a European application after
allowance of the corresponding Canadian application. The EPO side
of this PPH is open to any EP application, regardless of its filing
date. However, this direction of the highway is less useful, since
any applicant can already easily request expedited review in the
EPO (no government fee or reasons required).
The patent office where the PPH expedited review request is
filed tries to make the prosecution of that patent application more
efficient by reviewing search and examination reports already
completed by the other patent office. Reviewing the other patent
office's prior work analyzing patentability helps provide a
head start. To create further efficiency, the PPH request must also
align the pending patent claims with the allowable claims from the
other jurisdiction. Therefore, PPH only makes sense where
applicants want the same scope of patent coverage in both patents.
PPH is not a 'rubber stamp' process, since each patent
office does its own review and assessment of patentability.
Canada has PPH programs in place with many individual
countries, as well as a Global PPH program. Please contact us for
more information about Canadian PPH and other ways to accelerate
patent examination in Canada.
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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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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