The Canadian Intellectual Property Office (CIPO) and the United States Patent and Trademark Office (USPTO) started a one-year trial of a patent prosecution highway on January 28, 2008.
The program enables an applicant with at least one claim found patentable in one office to accelerate the examination of the corresponding application in the other office.
The sharing of prior art search results and examination conclusions between patent offices is intended to increase efficiency and quality of examination.
To qualify for the program, a Canadian application must satisfy the following five requirements:
1. The Canadian application is either: (i) an application which claims priority to a U.S. national application; (ii) a PCT national phase application that claims priority to a U.S. national application; or (iii) a divisional application of (i) or (ii).
2. The corresponding U.S. application has one or more claims that are determined to be allowable by the USPTO.
3. The Canadian claims to be examined must sufficiently correspond to one or more of the claims found allowable by the USPTO. Claims shall be considered to sufficiently correspond where the claims are of the same or similar scope. The U.S. claims should be indicated as allowable in an Office Action or a Notice of Allowance.
4. The Canadian application is open to public inspection.
5. CIPO has not yet begun examination of the application.
Similar requirements must be met for a U.S. application to qualify for expedited examination based on CIPO’s determination that a Canadian application contains allowable claims. In our experience, the U.S. application is examined before the Canadian application in most biotechnology cases.
CIPO has advised Bereskin & Parr that U.S. “method of medical treatment” claims found allowable by the USPTO will be considered to sufficiently correspond to Canadian medical “use” style claims to qualify for the highway.
An applicant wanting to take advantage of the program must file a request for accelerated examination under the program, relevant supporting documents, (e.g. a copy of USPTO correspondence showing allowability) and a completed claim correspondence table showing the relationship between the claims of the Canadian application and the claims of the corresponding U.S. application.
Applications accepted into the program are still subject to full examination under the domestic laws of the particular office. A determination by one office that certain claims are allowable will not guarantee that the other office will consider the claims allowable.
There are presently no additional Canadian government fees for expedited requests under the program. The usual request for examination fee applies.
Bereskin & Parr is pleased to welcome Patricia Folkins to the partnership effective January 2008
Patricia Folkins B.Sc., Ph.D. (Chem.)
Patricia is a registered Canadian and U.S. patent agent and works out of the firm’s Mississauga office. Patricia prepares and prosecutes pharmaceutical, biotechnology and chemical patents, including preparing and filing applications, assessing new technology and portfolio management.
Michel Belanger joined our firm in 2007
Michel Bélanger B.Sc. (Chem.)
Michel is a registered Canadian and U.S. patent agent in our Montréal office. Michel’s practice focuses on drafting and prosecuting patent applications for pharmaceutical, biotechnology and chemical inventions. He has over 25 years of experience in intellectual property.
Laurence MacPhie returned to the firm last Fall after being called to the Ontario Bar
Laurence MacPhie B.Sc. (Biochem.), Ph.D. (Human Genetics), J.D.
Laurence is now an associate lawyer. His practice focuses on patents for biotechnology, chemical and pharmaceutical innovations as well as legal analysis of patent infringement and validity. He has a Ph.D. in human genetics from Oxford University.
Mathieu Miron also joined our firm in 2007
Mathieu Miron B.Sc., Ph.D. (Biochem.)
Mathieu is a technical consultant and works out of the firm’s Montréal office. His practice focuses on assisting in the drafting and prosecuting of patents for pharmaceutical, biotechnology and chemical inventions. Mathieu has a Ph.D. in biochemistry from McGill University.
Edited by Noel Courage. Please send feedback and suggestions to Noel at ncourage@bereskinparr.com.
