1 June 2011Jurisdiction reportsHeather Probert

Expanding the PPH programme in Canada

The developments include new pilot agreements with three additional countries, the conversion of the agreement with the USPTO from a fixedterm pilot project to an indeterminate agreement, and the commencement of an internal PCT-PPH pilot project.

Since the successful introduction of the original pilot agreement with the USPTO in January 28, 2008, the Canadian Intellectual Property Office (CIPO) has concluded pilot agreements with the offices of Denmark, Japan and Korea, extending to September 30, 2011, and with the offices of Finland, Germany and Spain, extending to September 30, 2012.

It is expected that unless any unforeseen problems arise, each agreement will be extended or made indefinite at the applicable dates. Discussions continue between CIPO and the offices of other countries for further expansion.

The underlying rationale of the agreements is to avoid duplication of time and effort in the examination process, by providing that where at least some of the claims in an application in the office of first filing are allowed, the applicant has the right to seek accelerated examination in the office of second filing. Prosecution under the PPH is also available where both related applications are national phase entry applications from a PCT application that does not claim priority.

“The underlying rationale of the agreements is to avoid duplication of time and effort in the examination process”

In addition to the right to accelerated examination, which for the PPH in Canada involves no additional government fees above the regular fee for the request for examination, the important practical advantage is that the office of second filing will generally rely on the search and examination results in the office of first filing, in particular in relation to prior art.

The newly introduced internal PCT-PPH pilot project provides for the right to accelerated examination of a Canadian national phase entry application where the international application was generated with CIPO at the international stage, and is favourable.

To date, CIPO reports that the average time for approval of the request for entry of an application into the PPH is two months, and the average time between approval of the request and allowance of the application is slightly more than six months, with 92 percent of such applications proceeding to grant; 44 percent of all applications in the programme are allowed without any office action; and 70 percent of the office actions issued are directed to matters other than prior art issues, such as Canadian formalities.

The most significant obstacle faced by applicants in the PPH programme in CIPO is issues of alleged ‘non-statutory subject matter’. As each national office has to apply its own substantive patent law, it cannot allow claims to subject matter that is not patentable in its own jurisdiction, regardless of the eligibility of such claims in any other jurisdiction.

However, where an application is otherwise eligible for the PPH in Canada, CIPO will approve it for entry, subject to any subject matter objections, and often the claims can be amended in some manner to bring them within the applicable criteria, for example by restructuring claims directed to methods of medical treatment, or adding appropriate physical or other steps to method claims.

Since becoming an international searching authority/international preliminary examination authority, CIPO has justifiably taken pride in meeting and exceeding expected timelines, especially in relation to issuing the international search report.

This currently compares favourably with the US, and makes it particularly advantageous for applicants to file PCT applications in Canada, where entitled to do so, as there will be ample time to take the ISR into account in decisions as to whether and where to file national and regional applications.

The new PCT-PPH pilot project provides the added advantage that an applicant filing a PCT application in Canada can obtain a prompt ISR, and if that is favourable, file a national phase application in Canada. Then, it can use the PCT-PPH to obtain a prompt allowance, and based on that allowance, use the PPH for national applications in other countries, if otherwise meeting the test for eligibility under the relevant agreement.

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