Mottainai Model now applies to all PPH agreements with CIPO

Canadian Intellectual Property Office (“CIPO”) announced that effective July 29, 2013, all of CIPO’s PPH agreements will adopt the Mottainai Model. A patent applicant now can accelerate the examination of its patent application in Canada using PPH subject to much less restriction.

Patent Prosecution Highway (“PPH”) is a bi-lateral program between two cooperating patent offices that allows one cooperating office (the "second" office) to use the examination results obtained at the other cooperating office (the "first" office), thus accelerating the examination process of a patent application at the second office. The PPH program can be very useful in that it can help accelerate the examination at the second office, and thus reduce the pending period significantly. According to CIPO[1], the pendency of a patent application at CIPO can be reduced from the typical 34 to 53 months (from request to final allowance) to a much shorter 5 to 7 months. In addition, the average number of office actions is also reduced significantly. This represents very significant time and cost savings.

However, the conventional PPH program requires the applicant to both file and examine the patent application first at the same office and then take the examination results at the first office to the second office. That the first office must be the same office where both the filing and the examination are first carried out can be a severe restriction. For example, an applicant may file a patent application in Country A first (for example, as a priority application), but have obtained examination results and allowance (i.e., approval) in Country B first, both outside Canada. This is a very common scenario. PPH would not be available under conventional PPH in this scenario.

Mottainai Model is proposed to address this issue. Under Mottainai Model, sometimes also known as PPH 2.0, it does not matter where the patent application was filed first. In the above scenario, even if the application in Country B is not the earliest counterpart application (i.e., Countries A and B are different), the examination results in Country B still can be used as the basis for a PPH request in Canada, the “second office”. The office in Country A is not required to be the "first office" where the application is first examined.

Prior to this announcement, Canada already has entered into Mottainai PPH agreements with the patent offices of Finland, Japan, Spain, the United Kingdom and the United States. This is now extended to all countries with which Canada has PPH agreements, which include Denmark, Germany, Israel, and Korea. Thus, if an applicant has patent applications filed in Canada and any of these PPH countries, the applicant may request that the examination in Canada be accelerated under PPH by utilizing the examination results in one of these countries, irrespective of where the application was first filed. PPH program at CIPO is still at its pilot stage. Currently, CIPO charges no fees for filing a PPH request, though regular examination fees still apply.

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Dr. Sean X. Zhang is an IP Partner at Dale & Lessmann LLP. To speak with Dr. Zhang, please call 416-369-7808 or send an e-mail message to him at szhang@dalelessmann.com.

[1] http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03...