IP NEWS

More Lanes Added to the Patent Prosecution Highway

27/10/2009

The Canadian Intellectual Property Office (CIPO) recently extended the Patent Prosecution Highway (PPH) pilot program to include agreements with the Japan Patent Office (JPO), the Danish Patent and Trademark Office (DKPTO) and the Korean Intellectual Property Office (KIPO). These PPH pilot programs, which are similar to the existing CIPO and United States Patent and Trademark Office (USPTO) PPH pilot project, began on October 1, 2009 and will last for a period of two years. These programs should make it quicker, easier and less costly to obtain a Canadian patent based on an application that has been allowed in one of these foreign countries.

Also effective October 1, 2009, the existing CIPO-USPTO PPH pilot program was revised to harmonize it with the three new pilot programs. The amendment allows an applicant to include claims before the office of second filing that are narrower in scope than the claims before the office of first filing while still maintaining the required “claim correspondence”.

These pilot programs allow applicants to realize patent protection in Canada at a significantly earlier date in comparison to regular prosecution. Currently, there are no government fees associated with requests for prosecution under one of the PPH pilot programs.

The respective patent offices have published guidelines on requesting participation in the PPH programs. To be eligible, a patent applicant must have allowable claims in an “Office of First Filing” in order to have the equivalent patent application fast-tracked in an “Office of Second Filing”. Cited prior art and claims indicated to be allowable by the Office of First Filing are provided to the Office of Second Filing.

The main requirements for eligibility in requesting participation in the PPH programs are as follows:

  1. The application filed in the Office of Second Filing must be an application claiming priority under the Paris Convention to the corresponding application filed in the Office of First Filing, or a PCT national phase application claiming priority from the corresponding application filed in the Office of First Filing.
  2. The application filed in the Office of First Filing must have one or more allowable claims.
  3. All claims on file in the Office of Second Filing must significantly correspond to or be narrower in scope than the claims indicated as being allowable in the Office of First Filing.
  4. The application filed in the Office of Second Filing must be open to public inspection.
  5. Examination of the application in the Office of Second Filing has been requested but not yet begun.

An applicant may be required to provide to CIPO professional translations into English or French of the corresponding Japanese, Danish or Korean patent publication, allowed claims, office actions and cited prior art references.

Please contact one of our professionals if you wish to discuss the potential benefits of a PPH program in your particular case.

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

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