Patent Prosecution Highway Revisited


The Canadian Intellectual Property Office (“CIPO”) has started 2014 off on an international foot by announcing its involvement in a new Global Patent Prosecution Highway (“PPH”) pilot agreement. The agreement includes partnerships with many of CIPO’s current patent office partners, as well as seven (7) new offices. As such, Canada now has agreements in place with the following jurisdictions:

  • Australia
  • China
  • Denmark
  • Finland
  • Germany
  • Hungary
  • Iceland
  • Israel
  • Japan
  • Korea
  • Mexico
  • Nordic Patent Institute (Denmark, Iceland and Norway)
  • Norway
  • Portugal
  • Russia
  • Spain
  • Sweden
  • United Kingdom
  • United States

The Global PPH pilot agreement simplifies the current PPH process by using one set of qualifying requirements for all of the PPH partner countries. An applicant can now make a PPH request based on national or international (PCT) work products to any or all of the 16 international intellectual property offices participating in the pilot agreement.

The importance of considering PPH options in Canada is underscored by comprehensive PPH data maintained by the Japanese Patent Office. Of note, applicants utilizing the PPH in Canada typically experience:

  1. a significant decrease in the amount of time from a PPH request to a first office action being issued from the Canadian Patent Office;
  2. a significant increase in first office action allowance rate;
  3. a significant decrease in the amount of time from a PPH request to a Final Action being issued from the Canadian Patent Office;
  4. a significant decrease in the number of office actions issuing during prosecution; and
  5. a significantly higher grant rate.

All of the above points contribute to substantial cost savings for patent applicants that wish to take advantage of PPH programs in Canada. Foreign applicants are encouraged to make inquiries with their Canadian counsel so as to best determine whether Canada’s PPH options are a suitable way of moving towards a cost- and time-efficient patent prosecution.