Jul 14 2015
The Patent Prosecution Highway (PPH) pilot program between the Canadian Intellectual Property Office (CIPO) and the European Patent Office (EPO) came into effect on January 6, 2015. The program will last for a period of three years, ending on January 5, 2018. If past history is any guide, the CIPO-EPO PPH program will be extended or made permanent at that time. The program aims to accelerate patent examination for applicants who file in both CIPO and EPO.
The PPH is an international framework in which patent examination may be expedited if the claims are found allowable in another jurisdiction. Under the CIPO-EPO PPH program, patent applicants whose claims have been found to be patentable by either CIPO or EPO can ask for accelerated processing of their corresponding applications that are pending before the other Patent Office.
A PPH request to CIPO based on an earlier examined EPO patent application must satisfy certain criteria, including:
- The Canadian application was filed or has entered the national phase on or after January 6, 2015. Canadian divisional applications filed after January 6, 2015 would also eligible even though the parent application was filed earlier.
- The applications before CIPO and EPO have the same earliest filing date, which may be the priority date, the filing date of a corresponding national application filed with the EPO, or a corresponding Patent Cooperation Treaty (PCT) international application for which the EPO has been an International Search Authority (ISA) and/or International Preliminary Examining Authority (IPEA) under the PCT.
- The corresponding EPO application(s) must have been substantively examined by the EPO, including consideration of novelty and inventive step and have at least one claim indicated by EPO to be allowable. Claims determined to be novel, inventive and industrially applicable by EPO when acting as the ISA and/or IPEA are also considered to be allowable under the PPH criteria.
- A request for examination has been made or will accompany the PPH request and no office actions have yet issued for the Canadian application.
When making a request under the PPH, all the claims of the CIPO application must be amended to correspond to claims in the EPO application(s). Furthermore, given that examination of a Canadian application can be delayed up to five years from the filing date (or international filing date for PCT national phase applications), in certain cases it could be advantageous for applicants to wait for claims in a corresponding EPO application(s) to be allowed before requesting examination. Not only would this approach defer costs and streamline the application process, but in view of Canada’s strict prohibition on double-patenting, this approach is recommended where multiple applications arose as a result of voluntary and/or mandatory divisional applications. In Canada, it is best to maintain all the claims of interest in one application and await any unity objections before dividing out the claims.
To increase the likelihood of an early allowance, Canadian formality requirements should be addressed at the time of the PPH request. Patent documents (where not publicly available) and non-patent literature cited by the EPO may be provided with the PPH request. While provision of these documents is optional, it may further accelerate examination.
There is no government fee for a PPH request beyond the usual examination fee that applies to all applications. CIPO is currently engaged in PPH pilot programs with about 20 other jurisdictions and often issues its first examination report or allowance within 90 days after the PPH request is approved. This is much faster than the usual pace of examination, where the first examination report is usually received within about 10-20 months after the request for examination.
The new CIPO-EPO PPH pilot program also offers an interesting opportunity for expediting EPO application(s) based on an earlier allowed Canadian application. Under this strategy, the prosecution of a Canadian application is expedited by the use of Special Order and payment of a fee or by entry into the green technology program for applicable applications. A PPH request can be then made in the EPO based on the earlier allowed Canadian application. Accordingly, with the new CIPO-EPO PPH pilot program, applicants now have yet another option to expedite examination and allowance of their Canadian and European applications.
Full details of the requirements are available on the CIPO website:
© 2015 Ridout & Maybee LLP
This article is for information purposes only and does not constitute legal or professional advice.
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Tags: CIPO, EPO, Patent Prosecution Highway, Patents, PPH