PCT and CIPO Test Drive the Patent Prosecution Highway

Beginning January 31, 2011, the Canadian Intellectual Property Office (CIPO) and the Patent Cooperation Treaty (PCT) have entered into a bilateral Patent Prosecution Highway (PPH) agreement, similar to PPH agreements between CIPO and Patent Offices in the US, Germany and Japan, among others.  The agreement will run for a two year trial period and allows patent examiners to make use of work products generated by CIPO as the ISA/IPEA.  Work products include positive results of written opinions of the ISA and IPEA or positive results from an international preliminary examination report.

To proceed under the PCT-PPH, applications must have entered the National Phase in Canada on or after January 31, 2011.  Based on a positive work product with CIPO as the ISA/IPEA, a Request for Examination is submitted on filing together with a Request for Accelerated Examination under the PPH. A claim concordance table, showing the relationship between the PCT application and the National Phase application is also required.  In some cases a Voluntary Amendment may further be required if the ISA/IPEA Examiner has highlighted some defects in the claims. There is presently no government fee for submitting a Request for Accelerated Examination under the PPH.

We are now strongly encouraging clients with favourable PCT written opinions to take advantage of the PCT-PPH (CIPO ISA/IPEA) to gain a swift allowance in Canada.  With an allowance in Canada, there is then the possibility of using the PPH to gain automatic allowances in patent regimes including the US, Germany and Japan, to name a few.

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