Extension of the Patent Prosecution Highway pilot agreement between the European Patent Office and the Canadian Intellectual Property Office

The Patent Prosecution Highway (PPH) pilot agreement between the Canadian Intellectual Property Office (CIPO) and the European Patent Office (EPO) has proven very successful. By the end of September 2017, the EPO had received a total of 102 requests under the trial: 64 based on Patent Cooperation Treaty (PCT) work products and 38 based on national work products. By the same date, CIPO had received a total of 406 requests: 325 based on PCT work products and 81 based on regional work products.

Given these results, the two offices have agreed to an extension that will take effect on January 6, 2018, for a period of three years.

With this extension, the previous filing date limitation has been removed. That means a CIPO application no longer needs to have been filed or have entered the national phase at CIPO on or after January 5, 2015.

The PPH pilot agreement allows applicants at CIPO and the EPO to obtain corresponding patents faster and more efficiently. It also enables CIPO and the EPO to benefit from work previously done by each other’s patent office, in turn reducing examination workload and improving patent quality.

CIPO’s goal for all PPH agreements is to provide a first office action (allowance or first substantive report) within 90 days from receipt of the request. CIPO has noted that approximately 37% of PCT-PPH applications and 26% of PPH applications are allowed without an office action. Both figures are significantly higher than for non-PPH national applications (3%). This represents a savings of time and effort for both CIPO and its clients.

As always, applicants whose claims have been found to be patentable by either the EPO or CIPO may request accelerated processing of their corresponding applications that are pending before the other office. A PPH request to CIPO can be made based on EPO national work products and EPO PCT work products. These could include the written opinion of the International Searching Authority, the written opinion of the International Preliminary Examination Authority and the International Preliminary Report on Patentability.

CIPO will continue to process requests for advanced prosecution under the PPH program free of charge. Regular fees (Schedule II of the Patent Rules) for requesting examination will continue to apply.

Please note that CIPO may suspend its participation in the pilot agreement at any stage if the volume of participation exceeds a manageable level. Notice will be published if the PPH agreement is suspended.

For more information, visit the PPH webpage, or contact the PPH Coordinator.