The Canadian Intellectual Property Office (CIPO) and the United States Patent and Trademark Office (USPTO) have extended the pilot Patent Prosecution Highway (PPH) program for another two years until January 28, 2011. The PPH program, begun on January 28, 2008, provides for significantly accelerated examination of patent applications by CIPO if examination work has already been conducted at the USPTO.
Under the PPH, if claims of an application have been found to be acceptable by the USPTO, an accelerated examination can be requested at CIPO (assuming that the Canadian examination has not yet commenced). Each Canadian patent application will be examined in accordance with the Canadian Patent Act and Rules and CIPO's Patent Office Practice. There is also a reciprocal PPH program run by the USPTO, which provides accelerated examination for U.S. patent applications where the corresponding Canadian application has been allowed by CIPO before examination has commenced at the USPTO.
The experience gained by CIPO during the initial year of the PPH program has led to changes being implemented. Most notably, Patent Cooperation Treaty (PCT) filings where the PCT application does not contain any priority claim are now eligible to participate in the PPH pilot program.
During the pilot, CIPO will process requests for accelerated prosecution under the PPH program free of charge. CIPO will consider what, if any, fees should apply for this service if it later becomes permanent. Regular fees for requesting examination will continue to apply during the PPH pilot.
The CIPO-USPTO PPH programs are part of a growing international movement to leverage the patent search-and-examination resources of national patent offices around the world. In addition to Canada and the United States, other countries participating in PPH programs with one or more other national patent offices include the European Union, Germany, Denmark, the United Kingdom, Japan, Korea, and Australia.
PPH programs can not only accelerate examination, but can also lead to lower prosecution costs for applicants, because patent claims already allowed by one patent office can be reused in a corresponding application in a participating PPH country. Patent applicants who have an application allowed in one country should consider whether any PPH programs are available to facilitate allowance of corresponding applications in other countries.