By Julia London & Chris Chiavatti
Applicants who wish to patent an invention in Canada should consider the Patent Prosecution Highway (“PPH”) to accelerate patent prosecution at the Canadian Intellectual Property Office (“CIPO”). The PPH is an excellent tool to save time and cut costs.
The CIPO currently has partnerships with 26 Intellectual Property (IP) Offices through a Global PPH (“GPPH”) pilot program and with four (4) other IP Offices through bilateral PPH programs. Participating intellectual property offices include:
- European Patent Office
- South Korea
- New Zealand
- Nordic Patent Institute (International Searching Authority for Norway, Denmark, and Iceland)
- United Kingdom
- United States
- Visegrad Patent Institute (International Searching Authority for Czechia, Hungary, Poland, Serbia, and Slovakia)
This post provides an overview of some of the PPH’s benefits and notes other considerations to keep in mind when using the CIPO’s PPH program.
Benefits of the PPH
On average, it takes two (2) months after requesting national PPH entry to receive a first office action and an average of one (1) office action is received before a final decision. The CIPO partially relies on the work of the other OEEs and thus does not need to perform extensive searches. As the examination period and number of office actions are reduced, applicants benefit from reduced prosecution costs. Additionally, the CIPO does not require a fee for entering the PPH system in Canada, whereas accelerated examination through other mechanisms usually costs $510 CAD.
An important consideration is that the scope of the claims in a PPH application cannot be broader than the corresponding allowed claims from the OEE. Before submitting a request for PPH entry, the applicant should consider whether the scope of the OEE claims optimally protects the invention.
By maintaining a similar scope of claims, the PPH program favours uniform claims across jurisdictions. Having uniform claims may facilitate global licensing deals, as well as the management of global patent portfolios.
PPH applications also have higher rates of allowance than non-PPH applications. From July 2020 to December 2020, the grant rate was 88% for PPH applications based on national stage OEE work products, compared to 63.4% across all types of applications.
Using the PPH: International Strategies
In Canada, an applicant must file a request to begin examination within four (4) years of filing the application with the CIPO (or, for PCT applications, within four (4) years of the international filing date). During those four (4) years, corresponding applications may also be prosecuted in other participating PPH jurisdictions. Often, an effective strategy is to postpone examination in Canada until at least one claim in a corresponding application is allowed, and then request entry into the PPH in Canada. This typically leads to streamlined and cost-effective Canadian prosecution.
Although an applicant entering the PPH may have to narrow the scope of the Canadian claims from the original filing to match the allowed OEE claims, divisional applications can be used to preserve claim scope in Canada. That is, if narrow claims allowed by an OEE receive a swift allowance in Canada, the applicant can file a further divisional application with a distinct claim scope and continue Canadian prosecution. Because divisional strategy can be intricate, we recommend discussing proposed claims with a Canadian expert before proceeding.
Leveraging the PPH system can be extremely advantageous when building a patent portfolio in multiple jurisdictions. For more information on how to benefit from the PPH, please contact our experts at BRION RAFFOUL LLP LLP.
 The PPH is a cooperation program between participating patent offices. Participating patent offices have agreed that when at least one claim has been deemed allowable by a first patent office (“Office of Earlier Examination” or “OEE”), the applicant may request expedited examination of the corresponding claim(s) pending in a second patent office (“Office of Later Examination” or “OLE”). The PPH allows OLEs to maximize the use of, and rely on, the work products of the OEEs. Avoiding duplicating work accelerates patent prosecution and reduces costs.