Canada signs three new Patent Prosecution Highway pilot programme agreements

The Canadian Intellectual Property Office (CIPO) has entered into agreements with the Japan Patent Office, the Danish Patent and Trademark Office and the Korean Intellectual Property Office to launch two-year pilot programmes that will allow for accelerated examination under the Patent Prosecution Highway. The agreements will be similar to the Canada-US Patent Prosecution Highway pilot project that currently exists between the CIPO and the US Patent and Trademark Office, which was initiated on 28th January 2008 and extended to 28th January 2011. The new pilot programmes began on 1st October 2009 for a period of two years, ending on 30th September 2011.

The purpose of the Patent Prosecution Highway programme is to accelerate examination of a patent application in one or more of those countries when an indication is received that some of the claims in a corresponding application have been found allowable in one of the above IP offices. During the pilot period, the CIPO will process requests for accelerated examination under the programme free of charge. Regular fees for requesting examination continue to apply.

Requirements for a request under Patent Prosecution Highway Programme
There are five requirements for requesting accelerated examination under the pilot programmes newly signed by the CIPO:

• The CIPO application is either:
  • a nationally filed application which validly claims priority under the Paris Convention from either a single national application or multiple national applications of the corresponding country (Denmark, Japan or Korea);
  • a nationally filed application which validly claims priority under the Paris Convention from a Patent Cooperation Treaty (PCT) application which has no priority claims;
  • a PCT national phase application where the PCT international application has validly claimed priority from a national application or multiple national applications of the corresponding country;
  • a PCT national phase application where the PCT international application has no priority claims;
  • a PCT national phase application where the PCT international application has validly claimed priority from a PCT international application which has no priority claims; or
  • a divisional of an application referred to in any of the above five requirements.
• At least one corresponding application has one or more claims that are determined to be allowable by the foreign patent office.
• All claims on file, as originally filed or as amended, for examination under the programme correspond sufficiently in scope to one or more of the claims determined to be allowable by the foreign patent office.
• Examination of the Canadian application has not yet begun.
• The Canadian application is open to public inspection.

Required documents for accelerated examination under Patent Prosecution Highway Programme
The Patent Prosecution Highway request form must be submitted to the CIPO with copies of the following documents:

• A translation into English or French of the corresponding granted patent publication and/or office action(s) issued during prosecution of the corresponding application.
• A translation into English or French of the claims allowed by the foreign patent office.
• A completed claim correspondence table showing the relationship between the claims submitted for examination in the Canadian application and the claims allowed by the foreign patent office.

Anticipated benefits for applicants
The Patent Prosecution Highway programme is designed to accelerate significantly the examination of patent applications for applicants having corresponding cases in different countries where the claim coverage obtained in one country is believed to be satisfactory for the other country.

These new agreements signed by the CIPO will thus be similar to the Canada-US project that currently exists, but will require in addition the translation into English or French of the requested documents.