Save Time and Money filing a patent in Canada Using the Patent Prosecution Highway

For applications that qualify, the Patent Prosecution Highway (PPH) is often an effective way to expedite the examination process, while at the same time reducing the costs of Canadian patent prosecution.

The PPH enables foreign applicants to utilize the results of a previous examination resulting in either a positive International Search Report and Written Opinion (ISR/WO) or an allowance in a country that has a bilateral or reciprocal agreement with Canada. By submitting claims corresponding to those allowed in the other country, applicants can obtain advanced examination in Canada that often leads to an allowance on the first office action or a small number of office actions after that. To find out if the patent office in your country participates in the PPH, check with the World Intellectual Property Office.

When can you use the PPH in Canada?

If a patent application corresponding to a Canadian application was previously examined in a PPH member country, then the Canadian application may be eligible for the PPH program.

The Canadian Intellectual Property Office (CIPO) has reciprocal PPH agreements with 25 other countries. The PPH agreements allow applicants to benefit from work done by the patent office of another participating country. The rationale for the PPH process is to reduce examination workload and improve patent quality. Each bilateral PPH agreement is time-limited and is periodically reviewed for an extension if the program continues to benefit both countries.

Filing of a PPH application may occur at any time before substantive examination of the Canadian application has begun. Practically speaking, applicants usually file a request to participate in the PPH program when requesting an examination of the Canadian patent application. Since there are no excess claim fees in Canada nor fees for independent claims, applicants sometimes choose to wait to file a PPH application until continuation or divisional applications have been allowed so that all allowable claim types can be included in the Canadian application.

How to submit a PPH application

Applicants can work with a Registered Canadian Patent Agent to file a request for participation in the PPH program. PPH requests are often filed together with voluntary amendments to the specification and claims to satisfy Canadian formality requirements. The patent agent will review the application, prepare a voluntary amendment, prepare a claim correspondence table between the pending Canadian application and the corresponding foreign application, and provide the work product of the corresponding patent office. If the application is not published, the PPH request will also include an authorization to make the application open to public inspection.

Strategic considerations

Having submitted a significant number of PPH applications, we have found that Canadian Examiners typically give great deference to the WIPO ISR/WO, particularly if the International Search Authority is from a country that has a bilateral PPH agreement with Canada. One strategy that has worked well in the past is to file a Request for Examination and request for participation in the PPH program on or before the 30-month national entry deadline. This strategy often results in a Canadian allowance within nine months to one year of all claims found allowable in the ISR/WO. The Canadian allowance or patent grant can then be used as the basis of a PPH request in other countries that have a bilateral agreement with Canada. Due to the extensive network of PPH agreements that CIPO has entered into, this strategy can be used to employ the PPH program even in countries that do not have a reciprocal agreement with WIPO to consider the ISR/WO. We have also found that Examiners are more inclined to give deference under the PPH program to a request filed from a granted patent, rather than merely the ISR/WO. Contact us if you wish to take advantage of this strategy to expedite allowance in Canada and other countries from a positive ISR/WO.

In summary

There is enough complexity in the PPH application process to engage an expert team of Canadian IP professionals. The Brunet & Co. team have a proven process to manage Canadian filings of foreign patent applications and their subsequent examination. Brunet & Co. can advise on:

  1. PPH program eligibility of a patent application;
  2. Voluntary amendments;
  3. Relevant deadlines;
  4. Technical observations; and,
  5. Strategic considerations.

Contact Brunet & Co. today to discuss the eligibility of your patent for the PPH program.

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