Canada-UK Patent Prosecution Highway pilot programme launches

On 31st January 2012 the Patent Prosecution Highway (PPH) pilot project between the Canadian Intellectual Property Office (CIPO) and the UK Intellectual Property Office (UKIPO) began. It will run for two years (ending on 30th January 2014).

CIPO has already started several PPH programmes (pilot – Patent Cooperation Treaty, Spain, Germany, Finland, Korea, Japan, Germany and Denmark; indeterminate – United States), and the UK programme is its latest addition.

The PPH initiative provides a means of prioritising the examination of patent applications under certain conditions, where an indication of patentable subject matter has been made. The indication of patentable subject matter must be made for at least one claim. In the partnership with the UKIPO, CIPO will consider as patentable subject matter those claims of the UK application that have been allowed as indicated by the UK notification of grant letter. Thus, prosecution in the United Kingdom must be finished and the patent granted before a request for acceleration in Canada can be initiated.

Where requirements are met, the applicant can make a request to CIPO or one of its PPH partner offices for accelerated examination of a corresponding application.

At present, CIPO will process requests for advanced prosecution under the UKIPO PPH free of charge.

The requirements for accelerated examination in Canada under the CIPO-UKIPO PPH are as follows:

• The CIPO application for which participation in the PPH is requested and the corresponding UK application must be corresponding applications – that is, they must have the same earliest date (whether this is a priority date or a filing date). 
• At least one claim common between the CIPO application and the UKIPO application must have been allowed in the United Kingdom.
• All claims on file at CIPO, as originally filed or as amended, for examination under the PPH must sufficiently correspond to one or more of those claims allowed by the UKIPO. (An explanation of the notion of "sufficient correspondance" is provided on CIPO’s website.)
• The CIPO application must be open to public inspection. 
• CIPO must have received a request for examination, but not begun examination of the application.

In order to file a request for accelerated examination in Canada under the CIPO-UKIPO PPH, the applicant must provide: 

• A completed PPH request form (downloadable from CIPO’s website). 
• The UK office actions (CIPO will retrieve them; if it cannot, CIPO will request the applicant to provide a copy). 
• The claims of the UKIPO granted patent. 
• A completed claim correspondence table showing the relationship between the claims of the CIPO application and the allowed UK claims (an example of such table is provided on CIPO’s website).

The request for examination under the PPH may be made by mail, fax or electronically via the Industry Canada website. All subsequent correspondence with CIPO must be clearly identified as relating to a PPH application, to ensure that it is correctly processed.