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January 28, 2008
CANADA AND U. S. ESTABLISH PATENT PROSECUTION PILOT PROGRAM
The Canadian Intellectual Property Office (CIPO) and the United States Patent and Trademark Office (USPTO) have announced the implementation of a 1-year trial period for a Patent Prosecution Highway (PPH) program. The trial period began on January 28, 2008.
The program enables an applicant whose claims are determined to be patentable in one office to accelerate the examination of the corresponding application in the other office. The USPTO has established similar programs with the Japanese Patent Office and the United Kingdom Intellectual Property Office.
Through the sharing of search results, the program introduces efficiencies between the patent offices and should directly benefit Bereskin & Parr clients who are interested in obtaining corresponding Canadian/U. S. patents faster and more efficiently.
To qualify for the program a Canadian application must satisfy the following five requirements:
1. The CIPO application is either: (i) a nationally filed application which validly claims priority under the Paris Convention from either a single USPTO national application or multiple USPTO national applications; or (ii) a PCT national phase application where the PCT international application has validly claimed priority from a USPTO national application or multiple USPTO national applications; or (iii) a divisional of an application referred to in (i) or (ii);
2.At least one corresponding USPTO application has one or more claims that are determined to be allowable by the USPTO;
3.All claims on file, as originally filed or as amended, for accelerated examination under the PPH must sufficiently correspond to one or more of those claims indicated as allowable in the USPTO. Claims shall be considered to sufficiently correspond where the claims are of the same or similar scope. CIPO shall consider corresponding USPTO claims to be allowable as indicated in an Office Action;
4.The CIPO application is open to public inspection; and
5.CIPO has received a request for examination, but has not begun examination of the application.
An applicant wanting to take advantage of the program for a Canadian application must file a request for accelerated examination under the PPH, a completed PPH request form and relevant supporting documents. The supporting documents include a copy of office action(s) of the corresponding USPTO application(s), a copy of the claims examined by the USPTO and copies of subsequent amended claims found to be allowable by the USPTO where appropriate, and a completed claim correspondence table showing the relationship between the claims of the CIPO application for accelerated examination under the PPH and the claims of the corresponding USPTO application considered allowable by the USPTO. A patent examiner will consider the request and if all the requirements of the program are met, the examiner will conduct the accelerated examination.
The PPH also applies to a U. S. application when there is a corresponding Canadian application with allowed claims. Similar requirements must be met when seeking to use the PPH for a U. S. application.
Applicants should be aware that applications accepted into the program are still subject to full examination under the domestic laws of the particular office. As such, a determination by one office that certain claims are allowable will serve as no guarantee that the other office will consider the claims allowable.
There are presently no additional government fees for requests under the program.
Click here for further information from CIPO.
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