Canada Signs Three New PPH Pilot Program Agreements

Article by Demian Barbas , Patrice Préville and Sébastien Clark

The Canadian Intellectual Property Office (CIPO) has entered into agreements with the Japan Patent Office (JPO), the Danish Patent and Trademark Office (DKPTO) and the Korean Intellectual Property Office (KIPO) to launch two-year pilot programs that will allow for accelerated examination under the Patent Prosecution Highway (PPH). The agreements will be similar to the Canada-United States of America PPH pilot project that currently exists between CIPO and the United States Patent and Trademark Office (USPTO), which was initiated on January 28, 2008 and extended to January 28, 2011. These new PPH pilot programs will commence on October 1, 2009, for a period of two years ending on September 30, 2011.

The purpose of the PPH program is to accelerate examination of a patent application in one or more of those countries when an indication is received that some of the claims in a corresponding application have been found allowable in one of the above intellectual property offices. During the pilot period, CIPO will process requests for accelerated examination under the PPH programs free of charge. Regular fees for requesting examination continue to apply.

REQUIREMENTS FOR A REQUEST UNDER THE PPH PROGRAM IN CANADA

There are five requirements for requesting accelerated examination under these PPH pilot programs newly signed by CIPO:

1. The CIPO application is either:
   1. a nationally filed application which validly claims priority under the Paris Convention from either a single national application or multiple national applications of the corresponding country (Japan, Denmark or Korea);
   2. a nationally filed application which validly claims priority under the Paris Convention from a PCT application which has no priority claims;
   3. a PCT national phase application where the PCT international application has validly claimed priority from a national application or multiple national applications of the corresponding country;
   4. a PCT national phase application where the PCT international application has no priority claims;
   5. a PCT national phase application where the PCT international application has validly claimed priority from a PCT international application which has no priority claims; or
   6. a divisional of an application referred to in any of (i) to (v);
2. at least one corresponding application has one or more claims that are determined to be allowable by the foreign patent office (JPO, DKPTO or KIPO);
3. all claims on file, as originally filed or as amended, for examination under the PPH must correspond sufficiently in scope to one or more of the claims determined to be allowable by the foreign patent office;
4. examination of the Canadian application has not yet begun; and
5. the Canadian application is open to public inspection.

REQUIRED DOCUMENTS FOR ACCELERATED EXAMINATION UNDER THE PPH

The PPH request form must be submitted to CIPO with copies of the following documents:

1. a translation into English or French of the corresponding granted patent publication and/or office action(s) issued during prosecution of the corresponding application;
2. a translation into English or French of the claims allowed by the foreign patent office; and
3. a completed claim correspondence table showing the relationship between the claims submitted for examination in the Canadian application and the claims allowed by the foreign patent office.

ANTICIPATED BENEFITS FOR APPLICANTS

The PPH program is designed to significantly accelerate the examination of patent applications for Applicants having corresponding cases in different countries where the claim coverage obtained in one country is believed to be satisfactory for the other country.

These new agreements signed by CIPO will thus be similar to the Canada-United States PPH project that currently exists, but will require in addition the translation into English or French of the requested documents.

If you are considering requesting an accelerated examination under the PPH program for a patent application, please do not hesitate to contact one of our patent professionals.

The purpose of this document is to provide information as to developments in the law. It does not contain a full analysis of the law nor does it constitute an opinion of Ogilvy Renault LLP or any member of the firm on the points of law discussed.

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