IP NEWS

CIPO-EPO Patent Prosecution Highway Extended

06/01/2018

On January 6, 2018, the Patent Prosecution Highway (PPH) pilot program between the Canadian Intellectual Property Office (CIPO) and the European Patent Office (EPO) was extended for a further three years. CIPO has also removed the limitation that eligible applications must have been filed (or have a National Phase entry date) on or after January 5, 2015.

Under the program, patent applicants whose claims have been found to be patentable by either CIPO or EPO can request accelerated examination by the other patent office. The request to CIPO can be based on either an EPO regional or EPO/Patent Cooperation Treaty (PCT) application.  The Canadian claims must “sufficiently correspond” to the allowed European claims.

Expedited examination is also available in Canada through the green technology program or through a “special order” (which requires a fee). An application can be allowed within as little as about 6 months under these routes, as well as the PPH route.

If an applicant has pending applications in both Canada and the EPO, they can initially expedite prosecution in Canada under the “special order” or green technology programs, followed afterwards by a PPH request in the EPO after the Canadian application is allowed.

As with all CIPO PPH Programs, no government fees apply for the request, although regular fees still apply for requesting examination, issue fees and maintenance fees.

The renewal of the program is unsurprising given its success. Currently, EPO work products are in the top 5 for PPH requests in Canada. As of the end of September, 2017, CIPO had received a total of 406 requests under the CIPO-EPO PPH program. During the same time period, the EPO received 102 requests based on Canadian applications.

CIPO has stated that its goal for all PPH programs is to provide a first action (either allowance or Examiner’s report) within 90 days of receipt of the PPH request. This is much faster than the usual pace of examination, in which a first action usually issues within about 10-20 months after requesting examination.

The allowance rate for PPH applications is high. According to CIPO, the first action allowance rate is approximately 37% for PCT-PPH applications and 26% for other PPH applications. In contrast, the first action allowance rate for non-PPH applications is approximately 3%.

The CIPO-EPO PPH program provides applicants a valuable option to expedite examination and allowance of Canadian and European applications, thus streamlining the application process and minimizing costs.

Full details are available on the CIPO PPH webpage. For more information, contact one of our professionals.

This article is for information purposes only and does not constitute legal or professional advice.

Authors: Andrew Kaikai, Joy Mauthe (former associate)

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