dimanche, février 27, 2011

Canada: Patent Prosecution Highway agreement with USPTO extended

The Canadian Intellectual Property Office (CIPO) recently announced that, due to the success of its Patent Prosecution Highway (PPH) pilot project with the US Patent and Trademark Office (USPTO), the programme has been replaced by a PPH agreement for an indeterminate period. The requirements and procedures of this agreement remain the same as those of the Canada-US PPH pilot programme.

Under the Canada-US PPH programme, accelerated examination of a Canadian application can be requested when a corresponding US application has one or more allowed claims. All claims on file in the Canadian patent application, either as originally filed or as amended, must sufficiently correspond to one or more allowed (or patented) claims of the corresponding US application (or patent). There are also various requirements for the Canadian patent application to establish it effectively as corresponding to the US patent application.

The opposite scenario is also possible under the Canada-US PPH programme: accelerated examination of a US application is performed on the basis of a previously allowed corresponding Canadian patent application. However, this typically requires some planning in advance, as there are requirements for the US patent application to establish it effectively as corresponding to the Canadian patent application. One approach is first to file in Canada, and then to file in the United States with a priority claim from the Canadian patent application.

CIPO has also announced that it is extending the PPH pilot project to include Patent Cooperation Treaty (PCT) applications where CIPO has acted as the international searching authority and/or the international preliminary examining authority. As with other PPH initiatives, the PCT-PPH programme can result in expedited examination and issuance of a Canadian patent. CIPO's goal is to issue an office action or a notice of allowance within 90 days of a request filed under the PCT-PPH programme.

The PCT-PPH programme came into effect on January 31 2011 and will last for two years. As with other PPH programmes, there is no official government fee for requesting advanced prosecution under the PCT-PPH. There is a requirement that the PCT application be nationalised in Canada on or after January 31 2011. Details of further requirements have not yet been released by CIPO, but are expected to be similar to those for other PPH programmes.

Since the introduction of the Canada-US PPH programme, CIPO has branched out to establish additional PPH programmes with several other patent offices in Denmark, Germany, Japan, Korea, Finland and Spain.

If a foreign patent application has been allowed by any of these patent offices and there is a pending corresponding Canadian patent application, then it may be possible to request accelerated examination of the Canadian patent application based on the outcome of the foreign patent application. The opposite scenario is also a possibility for each of these patent offices.

Applicants interested in streamlining the Canadian patent examination process using the PPH programme are encouraged to determine whether the programme is appropriate. There are important considerations that may require careful attention on a case-by-case basis. For instance, important consideration may be required in light of Canada's laws against double patenting. In general terms, the claims of a Canadian patent must not be conterminous with, or obvious over, the claims of a Canadian patent previously granted to the same patentee. Double patenting in Canada is not well aligned with US continuation or divisional practice and cannot be overcome by way of terminal disclaimer.

In some cases CIPO has issued notices of allowance in less than 90 days from requesting accelerated examination. Therefore, the PPH programme has shown great potential for streamlining the patent examination process.

For further information on this topic please contact Paul den Boef at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486), fax (+1 613 232 8440) or email (pdenboef@smart-biggar.ca).

Contributed by Smart & Biggar/Fetherstonhaugh