Canada: "Patent Prosecution Highway" Pilot Program

Last Updated: June 3 2008
Article by Alexandre Abecassis

Canadian Intellectual Property Office (CIPO) – United States Patent and Trademark Office (USPTO) "Patent Prosecution Highway" Program

A one-year "Patent Prosecution Highway" (PPH) pilot program will be launched on January 28, 2008 between the Canadian Intellectual Property Office (CIPO) and the United States Patent and Trademark Office (USPTO).

The Canada-U.S. PPH pilot program is expected to allow volunteer applicants in both countries to obtain corresponding patents faster. This initiative may be of great interest for some of our clients since Canada and the United States are usually the first two jurisdictions of choice for patent protection, and any procedures to fast track prosecution in these jurisdictions may be welcome, especially in fast moving industries such as biotechnology or high technology in general.

A similar PPH program is also taking place, in test mode, between the USPTO and the United Kingdom Intellectual Property Office (UK-IPO). Moreover, a PPH program is fully implemented and working between the USPTO and the Japanese Patent Office (JPO) since January 4, 2008.

Under the Canada-U.S. PPH pilot program, a volunteer applicant whose claims are determined to be allowable in an office of first filing will have the possibility to have its application advanced for examination in a corresponding office of second filing.

In the case where the office of first filing is the USPTO, the requirements for requesting accelerated examination under the PPH pilot program at CIPO are the following:

  1. The patent application filed in CIPO is either: (i) a nationally filed application which validly claims priority under the Paris Convention from either a single USPTO national application or multiple USPTO national applications; or (ii) a PCT national phase application where the PCT international application has validly claimed priority from a USPTO national application or multiple USPTO national applications; or (iii) a divisional of an application referred to in (i) or (ii);

  2. At least one corresponding USPTO application has one or more claims that are determined to be allowable by the USPTO;

  3. All claims on file, as originally filed or as amended, for accelerated examination under the PPH program must sufficiently correspond to one or more of those claims indicated as allowable in the USPTO. Claims shall be considered to sufficiently correspond where the claims are of the same or similar scope. CIPO shall consider corresponding USPTO claims to be allowable as indicated in an Office Action.

  4. The application filed in CIPO is open to public inspection; and

  5. CIPO has received a request for examination, but has not begun examination of the application.

It is worth noting that during this one-year period, the request for accelerated examination under the PPH program is free of charge when made at CIPO.

In the case where the office of first filing is CIPO, the following conditions must be met:

  1. The U.S. application is (a) a Paris Convention application which either (i) validly claims priority under 35 U.S.C. 119(a) and 37 CFR 1.55 to one or more applications filed in CIPO, or (ii) validly claims priority under 35 U.S.C. 119(a)/365(a) to a PCT application that contains no priority claims, or (b) a national stage application under the PCT (an application which entered the national stage in the U.S. from a PCT international application after compliance with 35 U.S.C. 371), which PCT application (i) validly claims priority under 35 U.S.C. 365(b) to an application filed in the CIPO, or (ii) validly claims priority under 35 U.S.C. 365(b) to a PCT application that contains no priority claims, or (iii) contains no priority claim, or (c) a so-called bypass application filed under 35 U.S.C. 111(a) which validly claims benefit under 35 U.S.C. 120 to a PCT application, which PCT application (i) validly claims priority under 35 U.S.C. 365(b) to an application filed in CIPO, or (ii) validly claims priority under 35 U.S.C. 365(b) to a PCT application that contains no priority claims, or (iii) contains no priority claim;

  2. The Canadian application(s) filed in CIPO have at least one claim that was determined by the CIPO to be allowable. If the allowable claims from the Canadian application(s) are in a language other than English, then applicant must also submit an English translation of the allowable claims and a statement that the English translation is accurate;

  3. All the claims in each U.S. application for which a request for participation in the PPH pilot program is made must sufficiently correspond or be amended to sufficiently correspond to the allowable claims in the Canadian application(s). Claims will be considered to sufficiently correspond where, accounting for differences due to translations and claim format requirements, the claims are of the same or similar scope;

  4. Examination of the U.S. application for which participation in the PPH pilot program is requested has not begun;

  5. Applicant must file a request for participation in the PPH pilot program and a petition to make the U.S. application special under the PPH pilot program. A petition fee is required and must be submitted.

  6. Applicant must submit a copy of all the office actions from each of the Canadian application(s) containing the allowable claims that are the basis for the request, along with an English translation thereof and a statement that the English translation is accurate; and

  7. Applicant must submit an information disclosure statement (IDS) listing the documents cited by the CIPO examiner in the CIPO office action.

It is worth noting that the request for participation in the PPH pilot program and special status granted in a parent application will not carry over to a continuing application.

Provisional applications, plant and design applications, reissue applications, reexamination proceedings, and applications subject to a secrecy order are excluded from the program.

The PPH pilot program will end on January 28, 2009 but may be extended for up to an additional year if necessary to adequately assess the feasibility of the program. Both CIPO and USPTO will evaluate the results of the pilot program to determine whether the program should be fully implemented after the trial period.

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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