Legal Research

Traffic Report: Patent Prosecution Highway Faster, Cheaper Patents

By Noel Courage and Louisa Pontrelli

A Patent Prosecution Highway (“PPH”) program was implemented between the Canadian and US patent offices in 2008 to accelerate patent examination and issuance. Under the PPH, an applicant with allowable claims in either a US or Canadian patent application may request that the other country’s patent office provide a fast track examination to the corresponding application. The sharing of search and examination results between offices is intended to expedite and improve the quality of examination.

As an example of how the PPH works, if a US patent application is examined and claims are approved as patentable (“allowable”) by the US Patent Office (“USPTO”) the patent applicant can then use the PPH to request accelerated examination of the corresponding patent application in the Canadian Patent Office (“CPO”). US examination reports generated by the USPTO are submitted to the CPO examiner for review. The patent applicant must also align the unexamined Canadian patent application claims to be very similar or identical to the allowable US claims. The similarity requirement for the PPH claims facilitates the Canadian examiner’s review of the US search results and examination reports. The time to patent issuance in Canada can be reduced from years to months in some cases. As well, it is hoped that the patenting process becomes cheaper in Canada, provided that the Canadian examiner views patentability the same as the US examiner and does not make a lot of significant new objections. In circumstances where allowable Canadian claims are obtained before the US patent application is examined, then expedited PPH examination may be requested in the US. Certain other qualifications must also be met, which are not discussed in detail here.

The traffic flow trends at the USPTO and CPO have been consistent since the start of the PPH pilot program: PPH traffic flows heavily into the CPO and slowly into the USPTO. To date, the CPO has received 898 requests to expedite examination under the PPH. In sharp contrast, the USPTO has received 29 PPH requests under the PPH program (as of the end of March 2010). This difference is not unexpected since US patents are often examined and granted before examination is initiated in Canada. This is in part due to the Canadian patent system allowing applicants to delay examination for up to 5 years from the application filing date. The uneven traffic is also partly due to PPH requirements that Canadian patent applications cannot proceed via the US PPH system if they are based on a patent application that was first-filed in the US (many Canadian patent owners file in the US first because it is a major market). We think this restriction on PPH access should be removed.

The Canada-US PPH is currently running as a pilot program until 2011. The program was already extended once and we see no reason why it would not be extended again. In Fall 2009, Canada established similar PPH pilot programs with Japan, Korea and Denmark, which indicates that the Canadian government believes that the PPH concept is beneficial and should be expanded. The Canadian PPH pilot programs with Japan, Denmark and Korea will run until at least September 30, 2011. To date, the CPO has received 3 requests to expedite examination based on Japanese patent applications. No requests have been received yet in respect of Danish or Korean applications.

The PPH provides a useful tool in the patent applicant’s toolkit. It is not appropriate or applicable for all Canadian patent applications; however, it should be kept in mind at the outset of planning a patent strategy.

Full post as published by Slaw.ca on April 30, 2010 (boomark / email).