Bereskin & Parr LLP
Subscribe Twitter Linked-in RSS
  • About Us
  • Our People






  • Services
  • News & Publications
  • Events
  • Offices
  • Students
  • Careers

News & Publications

FIND AN ARTICLE

SUBSCRIBE TODAY

Keep informed about the latest news
and updates from Bereskin & Parr



 

MEDIA CONTACT
Evelyn Dempsey 
Manager, Business Development & Marketing
416.957.1182

 

 Bookmark this page  Print this page

Canadian Patent Office Building International On-ramp to Patent Prosecution Highway

January 1, 2011

Paul Horbal

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 .

Download PDF

Information on this website is for information only. It is not, and should not be taken as, legal advice. You should not rely on, or take or not take any action, based upon this information. Professional legal advice should be promptly obtained. Bereskin & Parr LLP professionals will be pleased to advise you.

 

About Us

Overview
People Clients Diversity and Inclusion

Accolades
Archives

Offices

Hours of Operation

Our People

All

Refine search by
Type Office Practice School

Services

Patents
Automotive Chemical Cleantech Electrical & Computer Technology Financial Technology Life Sciences Mechanical & Industrial Processes Medical Devices Nanotechnology Oil & Gas Plant Breeders’ Rights

Industrial Designs

Trademarks

Litigation

IP Management & Strategic Counselling

Licensing & Transactions

Regulatory, Advertising & Marketing

Copyright & Digital Media

News & Publications

Newsroom
Archive

Articles
Article Archives

Newsletters

Media & Press

Litigation Cases
Patent Trademark Copyright

Subscribe

Webinars

Students

Overview

Articling Program

Summer Program

Recruitment
Articling Recruitment Second Year Recruitment First Year Recruitment Career Fairs

B&P Your University

Current Students

University Prizes

How to Apply

Events

Events Calendar

Student Events Calendar

Offices

Careers

Support Staff

Professionals

Students

Languages

English

Français

中国语

日本語

Search