The “Vancouver Group” Set to Ease Patent Prosecution in Canada, Australia and the UK05/11/2009
The Canadian IP Office (CIPO) has reached an agreement with its counterparts in the UK and Australia to cooperate in key aspects of patent prosecution. The three offices, known as the “Vancouver Group”, have been discussing this project since April 2008 and it is expected that the new system will be implemented soon. The aim is eliminate duplication of effort between the offices, by sharing information and relying on examinations performed by other offices within the group.
The group has agreed on several “mutual exploitation principles”. These are similar to the principles of the various “patent prosecution highways” that exist between various patent offices, with several important differences. The main principles of the Vancouver Group are:
- Each Vancouver Group Office (VGO) will, where possible, rely on any patent granted by another VGO or on the search and examination performed by another VGO. A VGO may perform further search and examination if it deems further work necessary.
- This core principle will be applied in an “Office-driven” manner – i.e. Offices will rely on earlier work without the need for applicants to ask them to do so.
- The core principle will also be applied transparently. Where earlier work by another Office is relied on, the later Office will note this on their file and in the report to the applicant. If the later Office deems it necessary to do further work, it will note this on their file, together with an explanation of why the further work is thought necessary. Feedback will be provided by the later Office to the earlier Office, where appropriate.
- The core principle will apply irrespective of where the application was first filed.
- Where one VGO issues an office action indicating that at least one claim is allowable or granted a patent in relation to an application, the applicant will be able to apply to the other VGOs for accelerated examination of a related application.
The Vancouver Group is working closely with WIPO on this initiative, and the hope is that the new system would coordinate with the PCT process.
It is expected that once implemented, the process will simplify and reduce costs for applicants who file in two or more of the Vancouver Group countries. As well, since no distinction is made between the office of first filing and subsequent filings, it is possible for an applicant to rely on the readily-obtainable expedited prosecution route in Canada, and use this as a springboard to obtaining patents quickly and easily in Australia and the UK.
This article is for information purposes only and does not constitute legal or professional advice.