Getting a Patent Faster: the Canada-US Patent Prosecution Highway
By Keith Bird and Orin Del Vecchio, Lang Michener
On January 28, 2008, Canada and the United States began a one-year pilot project to speed up the process for obtaining a patent in one country once the patent was allowed in the other. The project is called the Patent Prosecution Highway (PPH). PPH, a joint initiative between the Canadian Intellectual Property Office (CIPO) and the United States Patent and Trademark Office (USPTO), is designed to expedite the examination of patent applications, and reduce the workload on patent examiners.
The concept behind the PPH is that an allowed patent application in a first country, say Canada, may be used to, effectively, move an application to the front of the examination queue in a second country, say the U.S. To take advantage of the PPH, the application in the second country must claim priority from the application in the first country and the claims present in the application in the second country must correspond with the allowed claims of the application in the first country. The PPH can be initiated after the first country finds at least one claim to be patentable (allowed).
Strategic considerations
The Canada-US PPH may create some significant benefits for patent applicants. By first filing a Canadian patent application, along with a request for accelerated examination, an applicant should receive a first office action, and possibly allowance, within as little as six months of filing. The corresponding U.S. application can enter the PPH as soon as the Canadian parent application has been allowed.
In this manner, it should be possible for applicants to avoid the complex and expensive accelerated examination requirements normally required by the USPTO, and still obtain an allowed and granted U.S. patent in an expedited fashion. Furthermore, if overly negative examination results were received from CIPO within the first year after filing the Canadian application, the applicant might decide to forego the expense of filing in the U.S. and thereby save the associated filing costs.
If patent protection beyond Canada and the U.S. were desired, this strategy could also be employed by filing an originating PCT application, with subsequent immediate National Entry into Canada.
Since the PPH is available for both new and previously filed applications that meet the necessary criteria, it may be possible to employ the above strategy for applications that have already been filed.
The Canada-US PPH creates new opportunities for patent applicants to assess and crystallize their intellectual property much more quickly than before, which can be of great assistance in technology fields where is important to change direction rapidly, such as in the software and biotechnology areas. Being able to obtain issued patents within months, rather than years, can mean the difference between success and failure when trying to attract investments.
Choosing the right jurisdiction of first-filing for a patent application is now more crucial than ever in view of the potential repercussions on PPH eligibility and benefits to be gained under the PPH.
