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 the Mottainai PPH framework, it does not matter where an application was first led. For example, an application is led in jurisdiction ‘A’, with corresponding applications later led in jurisdictions ‘B’ and ‘C’ respectively, and each claiming priority to the application led in ‘A’. ‘B’ and ‘C’ are signatories to the PPH with ‘B’ allowing the claims first. The PPH can then be used to accelerate examination at ‘C’.
For national phase applications, the PCT-PPH can advance examination based on either a written opinion (WO) or international preliminary report on patentability (IPRP) (ie, work product) issued by an International Searching Authority (ISA) and/or International Preliminary Examining Authority (IPEA). Here, a formal PCT-PPH agreement is in place between the national phase office and ISA and/or the IPEA.
Currently, the Canadian Intellectual Property Office (CIPO) is part of the Mottainai PPH with the national patent offices of Portugal, Denmark, Germany, Israel, Japan, South Korea, Finland, Spain, China, the UK, and the US. 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 at least one claim has been allowed by the OEE; the pending Canadian application and the corresponding allowed application are part of the same patent family
(eg, the two applications have the same earliest priority/filing date); all pending claims sufficiently correspond to one or more of the claims allowed by the OEE; the pending application has not yet been examined; and office actions (issued by the OEE) that are unavailable via an electronic dossier system, must be provided (in French or English) to CIPO.
As of the end of June 2013, the majority of PPH requests at CIPO used the US Patent and Trademark Office (USPTO) as the OEE. The efficiency of the programme is impressive: the grant rate was 91 percent (compared to 65 percent for non-PPH applications); the allowance rate after a first office action was 42 percent (compared to 5.1 percent); the average number of office actions was 0.7 (compared to 1.5); the average pendency from the PPH request to the first office action was 2.1 months (compared to 17.8 months); and the average pendency from the PPH request to a final decision was 6.2 months (as opposed to 35.6 months).
The results are similar for the PCT-PPH, bearing in mind that CIPO only accepts a work product issued by either CIPO or the USPTO.
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. Where an election of claims is made at an OEE, care should be taken not to file a voluntary divisional at CIPO, as this may result in double-patenting issues which cannot be corrected by a terminal disclaimer. Instead, a PPH request for one single application should be led for all of the groups of claims that have been allowed by the OEE.
The above describes strategies for fast-tracking Canadian applications with CIPO serving as an OLE. However, one may consider an early filing in Canada, as part of an international strategy. CIPO’s special order programme provides a first office action within 60 days, leading to either an immediate allowance, or subsequent allowance in the months that follow. CIPO can then be used as
an OEE for PPH requests in other jurisdictions. Applicants should fufil any foreign filing licence requirements prior to filing in Canada.
Finally, patent offices are hoping to launch a pilot global PPH programme in early 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 harmonisation of policies and procedures between participating offices
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