Canadian patent applicants and those considering filing applications in Canada should carefully consider taking advantage of the Patent Prosecution Highway (PPH) program. Costs and prosecution time may be saved by implementing this efficient patent prosecution strategy in Canada.
It has been over 7 years since the pilot Patent Prosecution Highway program was launched between Canada and the U.S. The program has been improved and expanded substantially since then. In early 2014, the PPH program evolved into the "Global Patent Prosecution Highway" pilot involving almost 20 country or regional intellectual property offices.1
Once a patent application has received allowance of at least one claim by a participating Patent Office, prosecution may be expedited in other participating Patent Offices for corresponding patent applications sharing the same priority date.2 Accelerated processing of a corresponding application will be provided pursuant to a PPH request if substantive examination has not yet commenced and if the claims in such corresponding application "sufficiently correspond to one or more of the claims found allowable".3 Procedurally, this typically involves amending the pending claims to correspond to those which have been allowed elsewhere, at the time a PPH request is filed.
Experience in Canada
Recent statistics from the Canadian Intellectual Property Office (CIPO) indicate that for 90% of Canadian patent applications in 2012-13, and for 92% of applications in 2013-14, a first action or allowance has been issued within 3 months of filing a proper PPH request.4,5
This offers a marked improvement over CIPO's own 2014-15 service targets of issuing first actions in 90% of applications following request for examination within 18 months (for organic chemistry subject matter) and within 27 months (for electrical subject matter).6
The statistics reveal that the PPH program has achieved substantial success in accelerating and streamlining examination of Canadian patent applications. However, few applicants are taking advantage of PPH benefits.
By June 2014, over 5000 PPH requests had been filed with CIPO, with 90% based on corresponding U.S. allowances.7 Averaged over a 6 and a half year period, this suggests that fewer than 800 PPH requests are made annually in Canada. One may then conclude that on average fewer than 3% of the 30,000 examination requests CIPO receives each year8 are utilizing the PPH program. Year over year, the number of PPH requests filed in Canada appears to be increasing.
Average pendency from filing a PPH request in Canada to final decision is 5.4 months, compared to 32.9 months for all applications (PPH and non-PPH).9 Correspondingly, in Canada, applications examined pursuant to the PPH receive on average almost one fewer office action on the road to a final decision than for all applications combined (0.7 compared to 1.5).10 40% of Canadian applications examined pursuant to a PPH request receive first action allowances (compared with merely 4.4% when all applications are considered).11
It is expected that claims examined pursuant to a PPH request will usually be granted in Canada. 91% of Canadian applications examined pursuant to the PPH issue to grant, significantly eclipsing the standard grant rate in Canada of 65%.12
Applicants using the PPH program in Canada benefit from significant prosecution time savings in addition to cost savings associated with having to file fewer responses. It is also worth noting that currently, CIPO does not charge a fee for accelerating examination pursuant to a PPH request.
PPH Strategy in Canada
In Canada, requesting examination can be deferred until 5 years from the application's filing date.
During that time, corresponding applications may be prosecuted in other participating jurisdictions. By deferring examination in Canada, an applicant can wait until such corresponding applications have reached a (hopefully successful) conclusion, providing the basis upon which a PPH request for accelerated examination may be made.
In Canada, it is possible to combine claims from multiple corresponding applications pursuant to a single PPH request. Such an approach can be cost effective as CIPO does not currently charge excess claims fees.
For example, if a corresponding U.S. patent application and U.S. continuation application have been allowed, the claims from both applications can be combined and filed in the Canadian application and examination may be expedited through a single PPH request.
In view of Canada's strict prohibition against double-patenting, filing voluntary divisional applications can create risk. Accordingly, it may be prudent to defer examination (including requesting PPH acceleration) until all corresponding applications (or at least all claims of interest) have been examined in other participating jurisdictions.
As noted above, it is common to file a voluntary amendment with CIPO to bring the claims into alignment with those allowed in participating PPH jurisdictions. When making a PPH request in Canada, it can also be worthwhile to review the disclosure and pre-emptively implement editorial amendments to the disclosure that a Canadian Examiner would typically require. This reduces the chance of an office action issuing merely for a procedural matter. For example, currently in Canada it is impermissible to incorporate other documents into the disclosure "by reference". Accordingly, when filing the PPH request it may be worthwhile to amend the disclosure to delete "incorporation by reference" language.
Any prosecution strategy should be carefully considered. Accelerated examination under the PPH typically avoids substantive examination of the Canadian application. If substantive examination is advantageous to the applicant, for example to pursue broader and/or additional claims, utilizing the PPH may not be appropriate.
However, for those applicants working with budgetary and/or time constraints who are satisfied with the scope of claims granted in other participating jurisdictions, utilizing the PPH process may offer significant prosecution time and cost savings. Adopting such practical strategies can make pursuing and obtaining patent protection in Canada more affordable.
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.