Jan 26 2008

The United States Patent and Trademark Office’s Patent Prosecution Highway is Routed North to Canada

The Canadian Intellectual Property Office (CIPO) and the United States Patent and Trademark Office announced on January 14, 2008, the initiation of a joint pilot program known as the Patent Prosecution Highway (PPH), which will allow a patent applicant having at least one allowable claim in either a U.S. or Canadian patent application to fast-track an equivalent patent application in the other country. The objective of this initiative, according to John W. Dudas, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, is to allow patent examiners to rely on prior art search results obtained through partnerships with other intellectual property offices, thus reducing duplication of efforts and decreasing workload.¹ CIPO has announced that there will be no fees for requesting accelerated examination under the PPH program during the pilot phase,² thus providing an easy solution for applicants with allowable claims in the USPTO to be advanced out of turn for examination at CIPO.

Similar PPH programs are underway between the USPTO and Japan and between the USPTO and the United Kingdom Intellectual Property Office (UK IPO). The partnership with JPO was initiated in July 2006 and the two offices have successfully concluded the pilot segment of the program with an agreement to fully implement the PPH effective January 28, 2008. The pilot partnership with the UK IPO was initiated on September 4, 2007. All offices have agreed that consistency should be maintained among the different PPH partnerships to ensure maximum work-sharing potential.

The USPTO and CIPO have published guidelines on requesting participation in the program. 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”. Prior art and cited and claims indicated to be allowable by the Office of First Filing are provided to the Office of the Second Filing. The main requirements for eligibility in requesting participation in the PPH program 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 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.

Additional administrative requirements apply and have been published by the USPTO and CIPO.³ Notable among the USPTO guidelines are that “petition to make special under the PPH pilot program”, is distinct from the existing “Petition to Make Special” set forth in MPEP 708.02(a). The Canada-U.S. PPH pilot program will commence on January 28, 2008, for a period of one year ending on January 28, 2009. The Offices may also terminate the PPH pilot program early if the volume of participation exceeds a manageable level, or for any other reason.

This newly announced patent prosecution highway extending north to Canada is expected to provide the advantage of a pathway to more efficient patent prosecution of Canadian patent applications after filing first in the United States.

For more information, please visit:
www.uspto.gov/web/offices/pac/dapp/opla/preognotice/pph_cipo.pdf
strategis.ic.gc.ca/sc_mrksv/cipo/patents/PPH_program-e.html
www.ic.gc.ca/sc_mrksv/cipo/patents/PPH_requirements_procedures-e.pdf

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

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Tags: CIPO, Patent Prosecution Highway, PPH, USPTO