Canada and Europe Now Connected on the Patent Prosecution Highway
October 6, 2014
By Cameron Gale and Isi Caulder
The Canadian Intellectual Property Office (“CIPO”) has signed a bilateral agreement with the European Patent Office ("EPO") to establish a Patent Prosecution Highway ("PPH") pilot program to facilitate fast-track examination of patent applications starting in January 2015.
The Patent Prosecution Highway is a term used to describe various initiatives for providing accelerated patent prosecution between participating patent offices by sharing information and work product. Canada is a party to various bilateral and trilateral PPH agreements as well as the Global Patent Prosecution Highway (GPPH) which started on January 6, 2014. In all, CIPO has already put in place PPH agreements with 19 other patent offices.
The new bilateral CIPO-EPO PPH pilot program means that applicants who have received allowance of claims from either CIPO or EPO will have the opportunity to accelerate prosecution of a corresponding application that is pending before the other office. In this way, overall patenting costs can be significantly reduced due to associated efficiencies. Under current PPH programs, a first office action is typically issued within three months of request, and there are fewer overall office actions and higher grant rates. Also, there are no government fees associated with filing a PPH request making this an attractive option for many.
Applicants should bear in mind that participating patent offices are not bound by decisions of the other office to allow claims. Before taking advantage of the various PPH programs available, applicants should carefully consider the examination performed and the scope of claims allowed. Further, accelerated examination under the PPH may not be available if examination has already started at the patent office that has not yet allowed the claims. Accordingly, applicants may consider delaying requests for examination or requesting “special order” examinations to take full advantage of the PPH program.
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