Gowling WLG Canada
In another step towards building stronger bilateral relations and fast tracking the examination of counterpart patent applications, the Canadian Intellectual Property Office (CIPO) and the European Patent Office (EPO) have signed a memorandum of understanding to establish a patent prosecution highway (PPH) pilot programme between the two patent offices. The PPH pilot programme between CIPO and EPO is set to begin in January 2015. The pilot programme applies to both nationally filed and Patent Cooperation Treaty work products, and will serve to fast track patent applications for applicants with counterpart applications in Canada and the European Union.
The PPH allows applicants to accelerate significantly the examination of a first patent application in a first partner office if a corresponding second patent application in a second partner office has been allowed by the second partner office. To accelerate the examination of the first patent application, an applicant will conform the pending claims in the first patent application to the allowed claims of the corresponding second patent application. Information regarding prosecution of the corresponding second patent application is shared between the first and second partner offices to accelerate the prosecution process.
The memorandum of understanding between CIPO and the EPO is significant. According to the 2011-2012 and 2012-2013 Annual Reports published by CIPO, approximately 10,000 applications per relevant fiscal year (around 30% of total patent filings in Canada during the relevant fiscal year) were filed by applicants noted as originating from an EU member state. These numbers, which reflect a sizeable portion of the total patent filings in Canada, at least in part reflect the vested interests of EU patent applicants in the Canadian market.
CIPO is currently engaged in PPH pilot programmes with nearly 20 other jurisdictions and its most recent engagement with the EPO speaks to the increasing inclination towards collaboration between patent offices in the patent examination process. The end result will likely be a more streamlined and simplified patent process for applicants.
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Gowling WLG Canada
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