Jenny Lyngsø Østergaard is a LLM student from the University of Copenhagen and is currently attending an exchange program at Osgoode Hall Law School. She is enrolled in Professor Mgbeoji’s Patents class in the Fall 2011. As part of the course requirements, students are asked to write a blog on a topic of their choice.

Globalization has brought many things with it – among them the need to take out patents for the same invention in many countries. Therefore, to an increasing degree, patent offices around the world make parallel examinations of patent applications for the same invention. This is the background of the establishment of the PPH – Patent Prosecution Highway.

PPH is a mechanism in which a patent application, which has already been deemed allowable in one IP office (office of first filing), provides a basis for a faster way through the system of another IP office (office of second filing). Thus, the purpose of the PPH program is to accelerate examination of a patent, when an indication is received that some of the claims in a corresponding application have been found allowable by another IP office. It is noted that it is not a requirement to use PPH that proceedings before the first IP office has come so far that a patent has been granted. However, it is a requirement that the first authority has found at least one claim patentable.

Recently three expiring PPH pilot agreements between Canada and Denmark, Japan and Korea have been extended for an additional two years until September 30, 2013. Earlier this year, the PPH pilot project between CIPO and USPTO was replaced by a PPH agreement for an indeterminate period. In addition, there are pilot projects between Canada and Spain, Finland and Germany, which began in October 2010.

In addition to the above-mentioned PPH pilot programs, in January 2011, CIPO launched a PCT-PPH pilot program. Where claims have been found allowable at the PCT level, the applicant can make a PCT-PPH request to CIPO for accelerated examination of a corresponding national phase application.

The agreements imply that inventors may request an accelerated processing of their patent application:

• At the CIPO, if a IP office in one of the participating states has previously accepted that the corresponding patent claims are patentable in the state of first filling (Denmark, Japan, Korea, US, Spain, Finland and Germany)
• At an IP office in one of the participating states, if CIPO has previously accepted that the relevant patent claims are patentable in the Canada.

There are specific formalities that must be met for acceptance into the PPH. According to the CIPO web page are there 5 requirements for requesting accelerated examination under the PPH pilot programs.

Both the patent applicants and the IP offices benefit from the PPH programs.

One of the benefits among others for patent applicants in Canada under the PPH programs is an accelerated patent issuance. According to the CIPO Frequently Asked Questions webpage for the PPH pilot programs, CIPO estimates that use of PPH in Canada usually makes it possible to receive the reception of the first examination action within 90 calendar days from the date of PPH request.

In addition to this, there is no fee for requesting advanced examination under the PPH projects in Canada. Regular fees for requesting examination will apply. Thus, it has the potential for reducing prosecution costs.

The PPH programs means that the other IP office can use the work that one authority has made, instead of starting from scratch. It is a huge waste of resources if the IP offices do not try to use each other’s work in the proceedings of applications for patents for similar inventions.

This is just one way to speed an application through the CIPO. Other opportunities are also available. Another option is to ask for advanced examination of a Canadian patent application (section 28 (1)(a) of the Patent Rules). In contrast, for applications under the PPH an extra fee will apply for an advanced examination and the applicant or a third party must declare that failure to advance the application would prejudice their rights. In other words, the case must be exceptional.

In March 2011, Section 28 of the Patent Rules was amended to introduce a procedure for accelerating the prosecution of Canadian patent applications relating to environmental technologies (section 28(1)(b) of the Patent Rules). Similar to the PPH pilot projects, no government fee is required.

Posted in Cross Border Issues, IP, Patents, Patents Course Topic