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Canada Joins the Patent Prosecution
Highway
Jonathan Roch
The Canadian Intellectual Property Office (CIPO)
and the United States Patent and Trademark Office (USPTO)
launched on January 28, 2008, the Patent Prosecution Highway (PPH)
pilot program for expediting the prosecution of patent
applications. Under this bilateral initiative, a patent
application in a first country with at least one allowable claim
can be used to accelerate the allowance of a corresponding
claim in a second country provided that certain criteria are
met.
The 12-month pilot program is designed to
evaluate the general interest in the program and the benefits
gained by each office in order to determine whether such a
program should be fully implemented. During the pilot phase,
applicants will be able to achieve a form of expedited
examination without making a formal fee-based request under
the Patent Rules. The CIPO believes that the collaboration
between offices should not only allow patent applicants to
obtain corresponding patents faster and more efficiently
(there is a two to three year backlog at present), but it
should also alleviate examination workload and improve the
quality of patents.
In order to be eligible to participate in
CIPO’s PPH program the following conditions must be met:
1. The Canadian application must be either a
Canadian Paris Convention application claiming priority to on
one or more US applications, a Canadian national phase
application based on an international (PCT) application
claiming priority to one or more US applications, or a
divisional patent application of any of the above categories
of applications.
2. The Canadian application must have a
“corresponding” US case (e.g. the priority application or a US
application or patent claiming priority to the same priority
application)
3. The corresponding US case must have one or
more allowed claims.
4. All claims on file for the Canadian
application must sufficiently correspond (be the same or
similar in scope) to one or more of the allowed claims in the
corresponding US application.
5. The Canadian application must be open to
public inspection. The applicant may request that the
application be open to public inspection at the time the PPH
request is made.
6. Examination must have been requested or be
made at the time of the PPH request.
7. At the time of the PPH request examination
of the Canadian application must not yet have begun.
8. The PPH request must include: a completed
PPH request form, a copy of any office action(s) for the
corresponding US application, a copy of the claims examined
and the allowed claims and a claim concordance table showing
the relationship of the Canadian claims to be examined and the
allowed or issued US claims.
The PPH may be particularly useful even in
cases where a PPH request serves as a means to ensure that
once the Examiner picks up an application, the Examiner's
attention is focused on determining whether the scope of the
Canadian claims is aligned with the allowed/issued claim(s)
obtained for the corresponding US application/patent. If
having the certainty of an issued patent in Canada to assert
against third parties, or attract certain investors or
partners is desirable, the PPH may provide considerable
benefits to applicants.
The PPH pilot program may not be suitable for
all applications. There may be significant value to a Canadian
application if one can afford the time to prosecute the
application based on broader claims that may have been
previously cancelled or withdrawn during US prosecution, or
adding additional or multiple dependent claims, at no
additional government cost because there are no claim fees in
Canada. Given that a claim set being submitted under the PPH
program must still be examined in accordance with Canadian
patent law, there is a risk that the claim scope may be
narrowed during the Canadian prosecution, for example if new
art was to come to the attention of the Examiner during
prosecution.
In order to determine if an application is a
good candidate for expedited examination under the PPH pilot
program careful consideration should be given to the overall
Canadian patent strategy for the invention.
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