Canada: CIPO-EPO Building Transatlantic Bridge On The Patent Prosecution Highway

In a key development, the Canadian Intellectual Property Office (CIPO) and the European Patent Office (EPO) have announced that they have signed a Memorandum of Understanding to establish a Patent Prosecution Highway (PPH) pilot program beginning January 2015. This bilateral agreement was signed at the 54th annual World Intellectual Property Office (WIPO) General Assemblies in Geneva. 

The pilot program will be based on both nationally filed and Patent Cooperation Treaty work products. Under the program, patent applicants whose claims have been found to be patentable by either CIPO or the EPO can ask for accelerated processing of their corresponding applications that are pending before the other office. 

This new agreement between CIPO and the EPO significantly broadens the availability of expedited prosecution under the PPH for applicants in Canada.  Canada already has PPH partnerships with a number of intellectual property offices through the Global Patent Prosecution Highway pilot program, including the United States Patent and Trademark Office (USPTO), the Japanese Patent Office (JPO) and the Korean Intellectual Property Office (KIPO). Canada also has bilateral PPH agreements with several intellectual property offices including the German Patent and Trade Mark Office (DPMA) and the State Intellectual Property Office of the People's Republic of China (SIPO).

According to statistics maintained by CIPO, PPH applications have far shorter wait times for examination and receive fewer office actions. PPH applications are also granted at a higher rate.

At present, there are no government fees associated with a PPH request to CIPO beyond the usual examination fee that applies to all applications. Thus, the new PPH pilot program between CIPO and the EPO makes Canada an even more cost-effective jurisdiction for obtaining patent protection.

Smart & Biggar has extensive experience using the PPH program to achieve cost savings for patent prosecution expenses in Canada without sacrificing patent quality. To learn more about the PPH pilot program between Canada and the EPO, please contact a member of our firm's Patents group.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.