New PCT-PPH program at CIPO announced

Canadian Intellectual Property Office (“CIPO”) recently announced another new PPH program, which added one more route for applicants to accelerate patenting process in Canada. This new PPH program became effective on January 31, 2013 and will end on January 30, 2015.

PPH (Patent Prosecution Highway) is a process between patent offices that aims at reducing duplicative efforts at patent offices, thus helping speed up the examination process and reducing the cost of obtaining a patent. Under PPH, if an applicant receives a ruling from one PPH patent office that at least one claim is patentable, the applicant may request a PPH partner patent office where a corresponding patent application is filed to fast-track the examination of the corresponding application, utilizing the examination result at the first PPH patent office. This often significantly shortens the time required to obtain a patent at the PPH partner patent office.

For example, if an applicant receives a ruling from the United States Patent and Trademark Office (the “USPTO”) that at least one claim of its U.S. application is allowed and the applicant also has a corresponding Canadian patent application that has not been examined, the applicant will be able to request CIPO, which has a PPH agreement with the USPTO, to fast-track the examination of the corresponding claim(s) in Canada. Similarly, an applicant may also request the USPTO to fast-track the examination of its U.S. application if at least one claim of the corresponding Canadian application has been found allowable. PPH generally provides the benefits of greater allowance rate (e.g., the allowance rate for non-PPH applications at the USPTO is less than 50 percent while more than 90 percent of PPH cases at the USPTO are allowed) and speedy examination (e.g., average pandency at CIPO reduced from 38.8 months to 5.3 months).

The new PPH program announced by CIPO is a PCT-PPH program that will enable applicants to fast-track examination of their patent applications in Canada based on the examination of their corresponding PCT applications. However, as the agreement is with the USPTO, only PCT applications examined by the USPTO as the International Search Authority (“ISA”) or International Preliminary Examination Authority (“IPEA”) will be eligible under this new USPTO PCT-PPH program. Prior to the addition of USPTO PCT- PPH, CIPO already had a pilot PCT-PPH program that applied to PCT applications examined by CIPO as ISA/IPEA. This PCT-PPH (CIPO ISA/IPEA) program now is permanent.

In addition to these two PCT-PPH programs, CIPO also has (non-PCT) PPH programs with patent offices in the United States, several European countries (Germany, United Kingdom, Spain, Denmark, and Finland), Israel, Japan and Korea.

Using these PPH programs could significantly accelerate the patenting process in Canada and at the same time reduce the prosecution costs. Similarly, to accelerate the patent examination processes in these countries, an applicant may also consider obtaining allowance of the corresponding Canadian application first and then fast-tracking the examinations in these countries through PPH.

---

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