The Patent Prosecution Highway (PPH) is an international framework in which patent prosecution may be accelerated in one jurisdiction if the claims in a corresponding application are allowed by a second jurisdiction. The two jurisdictions must have a bilateral PPH agreement.
In an earlier version of the PPH, an application filed at a first patent office (“Office of First Filing” or OFF) whose claims were allowed, could serve as the basis for accelerated examination of a corresponding application subsequently filed at a second patent office (“Office of Second Filing” or OSF), provided that examination at the OSF had not yet commenced. This framework fit nicely with Canadian patent practice, since examination of an application could be delayed up to five years from the filing date. Applicants were often counseled to hold off examination of their Canadian application until claims from a corresponding application were allowed by an OFF. A typical North American scenario would be as follows: an applicant first files in the US (which is the OFF), and then later files in Canada (which is the OSF), claiming priority on the earlier-filed US application. The applicant delays examination of the Canadian application, while prosecution of the US is completed. Once US claims are issued, the applicant requests examination of the Canadian application, along with entry into the US-Canada PPH program.
The earlier form of the PPH has been replaced by the Mottainai program. In the Mottainai PPH framework, it does not matter where an application was first filed. For example, an application is filed in jurisdiction ‘A’, with corresponding applications later filed in jurisdictions ‘B’ and ‘C’ respectively, and each claiming priority to the application filed at patent office ‘A’. Patent offices ‘B’ and ‘C’ are signatories to the PPH. If patent office ‘B’ allows the claims first, the PPH can then be used to accelerate examination at patent offices ‘C’ (provided examination has not yet commenced). If patent office ‘A’ is also a signatory to the PPH, then the allowance of claims by patent office ‘B’ can also be used to accelerate examination at patent office ‘A’ (provided examination has not yet commenced).
In addition, there is now a PCT-PPH program. For national phase applications, the PCT-PPH can advance examination based on an either a Written Opinion (WO) or International Preliminary Report on Patentability (IPRP) (i.e. “work product”) issued by an ISA and/or IEPA. A formal PCT-PPH agreement must be in place between the national phase office and the ISA and/or the IPEA in order to use the PCT-PPH program.
Currently, the Canadian Intellectual Property Office (CIPO) is part of the Mottainai PPH framework with agreements in place with the national patent offices of Denmark, Germany, Israel, Japan, Portugal, South Korea, Finland, Spain, China, the United Kingdom, and the United States. In the Mottainai PPH, the results of an office of earlier examination (OEE) are used to advance prosecution in an office of later examination (OLE).
A Canadian application is eligible for the PPH if the following conditions are met: 1) at least one claim has been allowed by the OEE; 2) the pending Canadian application and the corresponding allowed application are part of the same patent family (e.g. the two applications have the same earliest priority/filing date); 3) all pending claims sufficiently correspond to one or more of the claims allowed by the OEE; 4) the pending application has not yet been examined; and 5) office actions (issued by the OEE) that are unavailable via an electronic dossier system, must be provided (in French or English) to CIPO.
In addition, the applicant must request publication of the Canadian application has not yet been published by CIPO. Given that examination of a Canadian application can be delayed up to five years from the filing date (or international filing date for national phase applications), it would be advantageous for an applicant to wait for claims to issue in a corresponding application (filed in one of the above eleven countries), then request examination and entry into the PPH program at CIPO.
With regards to the PCT-PPH program, CIPO currently has a bilateral agreement with the USPTO. A Canadian national phase application is eligible for the PCT-PPH if the following conditions are met: 1) at least one claim has been deemed novel, inventive and industrially applicable in a WO or IPRP issued by either the USPTO or CIPO; and 2) all pending claims sufficiently correspond to one or more of the claims deemed novel, inventive and industrially applicable in the WO or IPRP. One apparent drawback is that an international work product issued by patent offices other than the USPTO or CIPO, cannot be used to advance a Canadian national phase application.
Statistics provided by the PPH Portal Site reveal that the PPH is gaining in popularity. As of the end of June 2013, 3552 PPH requests had been filed at CIPO since the inception of the program. The majority of these request used the USPTO as the OFF/ OEE, followed sequentially by Japan, Germany, and the United Kingdom. The efficiency of the program is impressive: the grant rate was 91% for PPH applications (compared to an overall grant rate of 65%); the allowance rate as a first office action was 42% for PPH applications (compared to an overall rate of 5.1%); the average number of office actions issued for PPH applications was 0.7 (compared to 1.5 for all applications); the average pendency from the PPH request to the first office action was 2.1 months (compared to 17.8 months for all applications); and the average pendency from the PPH request to a final decision was 6.2 months (as opposed to 35.6 months from an examination request to a final decision for all applications).
The results are similar, if not somewhat better, for the PCT-PPH program, bearing in mind that CIPO only accepts a work product issued by either CIPO or the USPTO. It should be noted that between January 2013 and June 2013, the grant rate of Canadian national phase applications examined via the PCT-PPH program was 100%, while the average pendency from the PCT-PPH request to a final decision was a mere 3.7 months. In addition, the allowance rate as a first office action was 61%; the average number of office actions issued was 0.5; and the average pendency from the PCT-PPH request to the first office action was 2.25 months. Given these statistics, it is conceivable to receive a notice of allowance for a Canadian national phase application within four months of national entry – provided that the (favourable) international work product is issued by either the USPTO or CIPO. These allowed claims can then form the basis of a PPH request in one of the many countries that have a bilateral PPH agreement with Canada. For example, if a Canadian national phase application is allowed based on an international work product issued by CIPO, then the allowed claims can serve as the basis for a Mottainai PPH request with patent offices that have such a bilateral agreement with CIPO.
A few peculiarities of Canadian patent law require some care when entering the PPH. For example, method of medical treatment claims allowed by an OEE must be amended to German and/or Swiss-style use claims in Canada, since method of medical treatment claims are deemed non-statutory by CIPO.
Where an election of claims is made at an OEE, care should be taken not to file a voluntary divisional of the corresponding Canadian application, as this may result in double-patenting issues which cannot be corrected later on. Canadian patent practice does not currently allow for a terminal disclaimer. Instead, examination of the Canadian application should be delayed as long as possible until groups have claims have been issued by the OEE. A PPH request for one single application should be filed at CIPO for all of the groups of claims that have been allowed by the OEE. As unity of invention regulations are more aligned with those of PCT practice, the Canadian Examiner may or may not issue an election request. If an election is requested, then the applicant can proceed to file a separate PPH request for each divisional application filed. Canadian courts have ruled that applications subject to a request for election by an Examiner, are shielded from double-patenting issues.
The above describes strategies for fast-tracking Canadian applications with CIPO serving as an OLE. As part of an international strategy, however, one may consider filing early in Canada and seeking accelerated examination via two routes. CIPO can then be used as an OEE for PPH requests in other jurisdictions. Applicants should take care to fulfill any foreign filing licence requirements prior to filing in Canada.
One such avenue is CIPO’s Special Order program, which provides a first office action within 60 days, either leading to an immediate allowance, or subsequent allowance in the months that follow. With the Special Order Program, one can have a set of allowed claims within one year of filing. The requirements are relatively simple: an applicant must pay a $500 (CAD) Special Order fee (plus examination fees), and indicate that failure to advance the application is likely to prejudice the applicant’s rights.
Another route to accelerated examination is entry into CIPO’s Green Technology Program, which requires no additional government fee. An application related to green technology can receive expedited examination if the applicant submits a declaration stating that their “application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or conserve the natural environment and resources.”
Finally, patent offices plan to launch a pilot Global PPH program in January 2014, in which it is proposed that a dozen jurisdictions will participate in the Mottainai PPH and PCT-PPH; all work products of participating offices will be used; machine translations will be accepted; office actions will be obtained via dossier access systems; and there will be better harmonization of policies and procedures between participating offices.
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