Should you be on the Patent Prosecution Highway?
Should you be on the Highway?
Should you be on the Patent Prosecution Highway? (PDF - 1.16 MB - 1 page)
Would you like to significantly advance the examination of your patent application?
Dœs your patent application at the Canadian Intellectual Property Office (CIPO) have a corresponding patent application, filed at an intellectual property office with which CIPO has a Patent Prosecution Highway (PPH) agreement, whose claims have been determined to be allowable?
If you have answered “yes” to both of these questions, then you should consult with your registered patent agent as to whether the examination of your patent application under the PPH program is right for you.
The PPH enables an applicant whose claims are determined to be allowable in an office of first filing (OFF) to have the corresponding application filed at CIPO, as an office of second filing (OSF), advanced out of turn for examination while at the same time allowing CIPO to exploit the search and examination results of the OFF.
The PPH network of intellectual property offices continues to grow. As of October 2009, CIPO has pilot programs in place with the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO) and the Danish Patent and Trademark Office (DKPTO).
What are the benefits?
CIPO clients realize the following benefits under the PPH:
- advance examination of a patent application;
- reception of the first examination action within three months of the PPH request; and
- no government fees associated with the pilot program.
CIPO's PPH program is one of the most successful programs amongst the participating intellectual property offices.
Do all patent applications qualify for this program?
For the nationally filed applications or PCT national phase applications that qualify, please refer to the requirements and procedures to file a request to CIPO.
All claims on file for accelerated examination under the PPH must sufficiently correspond to one or more of those claims indicated as allowable in the OFF. In total, there are five requirements for requesting accelerated examination under the PPH pilot program at CIPO.
What is the process?
Applicants should submit a letter requesting accelerated examination under the PPH to CIPO, accompanied by a completed PPH request form and the relevant supporting documents. These documents are accessible at: www.cipo.ic.gc.ca/pph.
Prior to submitting an application under the PPH program, the applicant should review the complete application and amend the application to correct known informalities that result from the differences between CIPO and OFF patent application requirements.
What is the cost?
During the pilot, CIPO will process requests for advance prosecution under the PPH program free of charge. CIPO will evaluate what, if any, fees should apply for this service if it later becomes permanent. Regular fees (Schedule II of the Patent Rules) for requesting examination will continue to apply during the PPH pilot.
Where can I obtain more information?
For more information, visit CIPO's PPH web pages or contact the PPH Project Manager. The CIPO website contains detailed and up-to-date information, including updates to the pilot program, the requirements and procedures to file a request to CIPO, the request form, and frequently asked questions.