Canada and the Patent Prosecution Highway


Sheema Khan

The Patent Prosecution Highway (PPH) is an international framework in which patent prosecution may be accelerated in one jurisdiction if the claims in a corresponding application are allowed by a second jurisdiction. The two jurisdictions must have a bilateral PPH agreement.

In the Mottainai PPH framework, it does not matter where an application was first filed. For example, an application is filed in jurisdiction ‘A’, with corresponding applications later filed in jurisdictions ‘B’ and ‘C’ respectively, and each claiming priority to the application filed in ‘A’. ‘B’ and ‘C’ are signatories to the PPH with ‘B’ allowing the claims first. The PPH can then be used to accelerate examination at ‘C’.

For national phase applications, the PCT-PPH can advance examination based on either a written opinion (WO) or international preliminary report on patentability (IPRP) (ie, work product) issued by an International Searching Authority (ISA) and/or International Preliminary Examining Authority (IPEA). Here, a formal PCT-PPH agreement is in place between the national phase office and ISA and/or the IPEA.

Currently, the Canadian Intellectual Property Office (CIPO) is part of the Mottainai PPH with the national patent offices of Portugal, Denmark, Germany, Israel, Japan, South Korea, Finland, Spain, China, the UK, and the US. In the Mottainai PPH, the results of an office of earlier examination (OEE) are used to advance prosecution in an office of later examination (OLE).

PPH, CIPO, patent prosecution highway