Canadian Patent Office Building International On-ramp to Patent Prosecution Highway
January 1, 2011
The Canadian Intellectual Property Office (CIPO) is launching a two-year pilot project that promises to speed examination of Canadian patent applications that are initially filed with CIPO under the Patent Cooperation Treaty (PCT) system.
The pilot project creates a Patent Prosecution Highway (PPH) for international (PCT) patent applications that are initially filed with CIPO and later “nationalized” in Canada. Having a PPH allows a patent Examiner to expedite examination of a patent application by drawing on the examination history of a counterpart patent application.
In this case, CIPO is bridging the gap between the examining division responsible for PCT applications and its regular Examiners. In effect, CIPO is introducing a Patent Prosecution Highway within itself! Under the new PCT-PPH, Examiners can refer to the results of preliminary examination during the international phase of the PCT process to speed up examination of the national application. CIPO’s goal is to provide a first action (an allowance or substantive report) within 90 days of a request for participation in the PCT-PPH program.
Unfortunately, the Canadian PCT-PPH does not apply to “national phase” applications in other countries.
The Canadian PCT-PPH is similar to a larger pilot program launched in 2010 by the U.S., European and Japanese Patent Offices. Under that program, examination of national patent applications in each of the three Patent Offices can be accelerated, by relying on a positive preliminary Examination Report given by one of the three Patent Offices during the “international phase”. However, Canadian applications are not eligible for participation in this program.
The PCT-PPH pilot project kicked off in January 2011. There is currently no additional charge to request participation in the PCT-PPH program. Innovators with an interest in obtaining patent protection abroad would be well-served to learn more about this and other Patent Prosecution Highway projects.
Paul Horbal, B.A.Sc., M.Sc. (Elec. Eng.), J.D., is an associate lawyer with Bereskin & Parr LLP's Software & High Technology Practice group. He can be reached in Toronto at 416.957.1664 or email@example.com.
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