The Canadian Intellectual Property Office (CIPO) has entered
into a new Patent Prosecution Highway (PPH) pilot agreement with the European Patent Office
(EPO). The PPH has a three year mandate; it began on January 6,
2015, and will operate until January 5, 2018. CIPO has previously
entered into PPH agreements with other patent offices around the
world and is a part of the Global Patent Prosecution Highway.
The PPH allows applicants with patent claims in one jurisdiction
to accelerate processing in the other jurisdiction for no
additional fee. PPH requests at the CIPO can be filed based on EPO
national work products and EPO Patent Cooperation Treaty work
products. PPH requests at EPO can be filed based on a CIPO
application that was filed or entered the national phase at CIPO on
or after January 6, 2015. Since applicants must file corresponding
patent claims, the PPH accelerated processing is only suitable for
applicants seeking similar patent protection in both
The PPH allows the expedited office to work more efficiently by
reviewing other office's analysis before completing its own
review and assessment of patentability. CIPO notes that the PPH
reduces workload and improves patent quality.
Under the accelerated processing, CIPO intends to provide a
first office action (either allowance or first substantive report)
within three months (90 days) of receiving a PPH request. This is
faster than a traditional application where a first examiner's
report is received 18 to 24 months after a request for an
examiner's report. CIPO has also noted that approximately 40%
of PPH applications are approved without an office action, whereas
only 4.4% of non-PPH national applications are approved without an
office action. As such, the PPH program will save both time and
effort for CIPO and the applicants.
Please see Stikeman Elliott's Canadian Technology and IP Law
blog posts on other PPH agreements here and here.
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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Materials from a recent "refresher training" for examiners at the Canadian Intellectual Property Office (CIPO) highlight inconsistencies between CIPO's examination practices and Supreme Court precedent.
In this recently reported decision, the Court granted Apotex leave to deliver Fresh as Amended Responding Statement of Issues for the reference into AstraZeneca's damages or Apotex's profits, following the Court's decision that the ‘693 Patent is valid and infringed by Apotex.
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