The Canadian Intellectual Property Office (CIPO) has entered into a new Patent Prosecution Highway (PPH) pilot agreement with the European Patent Office (EPO). The PPH has a three year mandate; it began on January 6, 2015, and will operate until January 5, 2018. CIPO has previously entered into PPH agreements with other patent offices around the world and is a part of the Global Patent Prosecution Highway.
The PPH allows applicants with patent claims in one jurisdiction to accelerate processing in the other jurisdiction for no additional fee. PPH requests at the CIPO can be filed based on EPO national work products and EPO Patent Cooperation Treaty work products. PPH requests at EPO can be filed based on a CIPO application that was filed or entered the national phase at CIPO on or after January 6, 2015. Since applicants must file corresponding patent claims, the PPH accelerated processing is only suitable for applicants seeking similar patent protection in both jurisdictions.
The PPH allows the expedited office to work more efficiently by reviewing other office's analysis before completing its own review and assessment of patentability. CIPO notes that the PPH reduces workload and improves patent quality.
Under the accelerated processing, CIPO intends to provide a first office action (either allowance or first substantive report) within three months (90 days) of receiving a PPH request. This is faster than a traditional application where a first examiner's report is received 18 to 24 months after a request for an examiner's report. CIPO has also noted that approximately 40% of PPH applications are approved without an office action, whereas only 4.4% of non-PPH national applications are approved without an office action. As such, the PPH program will save both time and effort for CIPO and the applicants.
Please see Stikeman Elliott's Canadian Technology and IP Law blog posts on other PPH agreements here and here.
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