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12 February 2018
Canada launched its Patent Prosecution Highway (PPH) programme in 2008 with the goal of fast tracking patent examination and improving patent quality. The programme has been a phenomenal success and offers numerous benefits to applicants. Data published by the Canadian Intellectual Property Office (CIPO) on the use of the programme suggests that applicants which use it have their applications examined sooner and encounter fewer office actions. The success of the PPH programme has resulted in foreign patent office participation being extended. For example, CIPO recently announced that it had extended the PPH programme with the European Patent Office for three years.
Independent analysis has confirmed that handling applications under the PPH programme improves CIPO's averages for:
These statistics – combined with the absence of a government fee for participation in the programme – mean that using the PPH programme in Canada can be exceptionally fast and cost effective.
Entry into the PPH programme is based on a favourable examination outcome of a foreign application, such a national work product indicating allowance or a Patent Cooperation Treaty (PCT) work product with a positive international report on patentability ('PCT-PPH application'). When requesting entry into the PPH programme, the claims of the Canadian patent application must be of the same or narrower scope than those on which the PPH request is based – or must be amended to be so.
The list of foreign patent offices whose work products can form the basis of a PPH entry request is lengthy and includes:
A complete list can be found here, along with specific requirements for participation in the PPH programme.
For all PPH and PCT-PPH applications that had a first action (either an office action or a notice of allowance) issued in the first quarter of 2017, CIPO issued the first action on average about four weeks after a PPH request was made for PPH applications and about five weeks after a PPH request was made for PCT-PPH applications. By contrast, for all non-PPH applications that had a first action issued during the same time frame, the average time to issue a first action after a request for examination was over 11 months. Thus, using the PPH programme can significantly reduce the period in which a first action is issued.
For all PPH and PCT-PPH applications that reached a final decision in the first quarter of 2017, the average pendency from PPH request to final decision was less than six months for PPH applications and about eight months for PCT-PPH applications. By contrast, the average pendency for non-PPH applications that reached a final decision during the same time frame was over 30 months. Thus, using the PPH programme tends to reduce overall examination time.
For all PPH and PCT-PPH applications that were allowed in the first quarter of 2017, the average number of office actions was 0.9 for PPH applications and 1.2 for PCT-PPH applications. By contrast, 1.7 office actions were typical for non-PPH applications that were allowed during the same time frame. This represents a significant saving for applicants in terms of the cost involved in prosecuting an application.
Consistent with the tendency to reduce the number of office actions received, for all PPH and PCT-PPH applications allowed in the first quarter of 2017, 37% of PPH applications and 23% of PCT-PPH applications had no office actions. In comparison, only 3.9% of non-PPH applications allowed during the same time frame had no office actions issued.
When comparing applications that were either granted or permanently abandoned in the first quarter of 2017, grant rates were significantly higher for PPH applications (89%) and PCT-PPH applications (88%) compared to non-PPH applications (70%).
For further information on this topic please contact Paul den Boef at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486) or email (email@example.com). The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
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