The Canadian Intellectual Property Office (CIPO) and the United
States Patent and Trademark Office (USPTO) have extended the pilot
Patent Prosecution Highway (PPH) program for another two years
until January 28, 2011. The PPH program, begun on January 28, 2008,
provides for significantly accelerated examination of patent
applications by CIPO if examination work has already been conducted
at the USPTO.
Under the PPH, if claims of an application have been found to be
acceptable by the USPTO, an accelerated examination can be
requested at CIPO (assuming that the Canadian examination has not
yet commenced). Each Canadian patent application will be examined
in accordance with the Canadian Patent Act and Rules and
CIPO's Patent Office Practice. There is also a reciprocal PPH
program run by the USPTO, which provides accelerated examination
for U.S. patent applications where the corresponding Canadian
application has been allowed by CIPO before examination has
commenced at the USPTO.
The experience gained by CIPO during the initial year of the PPH
program has led to changes being implemented. Most notably, Patent
Cooperation Treaty (PCT) filings where the PCT application does not
contain any priority claim are now eligible to participate in the
PPH pilot program.
During the pilot, CIPO will process requests for accelerated
prosecution under the PPH program free of charge. CIPO will
consider what, if any, fees should apply for this service if it
later becomes permanent. Regular fees for requesting examination
will continue to apply during the PPH pilot.
The CIPO-USPTO PPH programs are part of a growing international
movement to leverage the patent search-and-examination resources of
national patent offices around the world. In addition to Canada and
the United States, other countries participating in PPH programs
with one or more other national patent offices include the European
Union, Germany, Denmark, the United Kingdom, Japan, Korea, and
PPH programs can not only accelerate examination, but can also
lead to lower prosecution costs for applicants, because patent
claims already allowed by one patent office can be reused in a
corresponding application in a participating PPH country. Patent
applicants who have an application allowed in one country should
consider whether any PPH programs are available to facilitate
allowance of corresponding applications in other countries.
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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