The Canadian Intellectual Property Office (CIPO) extended the Patent Prosecution Highway (PPH) to China by beginning a pilot project on September 1, 2013 between CIPO and the State Intellectual Property Office of the People's Republic of China (SIPO). The pilot project will run for a period of two years, ending on August 31, 2015.
CIPO has already started several PPH programs (pilot – Patent Cooperation Treaty, Spain, Germany, Finland, Korea, Japan, Germany, UK and Denmark; indeterminate – United States), and the Chinese one is its latest addition.
The PPH initiative provides a means of prioritising the examination of patent applications under certain conditions, where an indication of patentable subject matter has been made. The indication of patentable subject matter must be made for at least one claim. In the partnership with the SIPO, CIPO will consider as patentable subject matter those claims of the Chinese application that have been allowed as indicated by the Chinese notification of grant letter. Thus, prosecution in China must be finished and the patent granted before a request for acceleration in Canada can be initiated. The reverse is also true: SIPO will consider as patentable subject matter those claims of the Canadian application that have been allowed, and the Chinese application would be accelerated under the PPH after granting of the Canadian application.
At present, CIPO will process requests for advanced prosecution under the SIPO PPH free of charge.
The requirements for accelerated examination in Canada under the CIPO-SIPO PPH are as follows:
- The Canadian application for which participation in the PPH is requested and the corresponding Chinese application must be corresponding applications – that is, they must have the same earliest date (whether this is a priority date or a filing date).
- At least one claim common between the Canadian application and the Chinese application must have been allowed in China.
- All claims on file at CIPO, as originally filed or as amended, for examination under the PPH must sufficiently correspond to one or more of those claims allowed by SIPO. (An explanation of the notion of "sufficient correspondance" is provided on CIPO's website.)
- The Canadian application must be open to public inspection.
- CIPO must have received a request for examination, but not begun examination of the application.
- In order to file a request for accelerated examination in Canada under the CIPO-SIPO PPH, the applicant must provide:
- A completed PPH request form (downloadable from CIPO's website).
- The Chinese office actions (CIPO will retrieve them; if it cannot, CIPO will request the applicant to provide a copy).
- The claims of the Chinese granted patent.
- A completed claim correspondence table showing the relationship between the claims of the Canadian application and the allowed Chinese claims (an example of such table is provided on CIPO's website).
The request for examination under the PPH may be made by mail, fax or electronically via the Industry Canada website. All subsequent correspondence with CIPO must be clearly identified as relating to a PPH application, to ensure that it is correctly processed.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.