Patent Prosecution Highway (PPH) programs speed up patent examination procedures and allow applicants to obtain patents quickly by allowing one patent office to benefit from work previously done by another patent office. Most PPH programs are bilateral, i.e., between two patent offices. On January 6, 2014, a new Global Patent Prosecution Highway (GPPH) pilot program was launched. The GPPH pilot program simplifies existing bilateral PPH programs by employing a single set of qualifying requirements for all participating patent offices. So far, participating patent offices include Australia, Canada, Denmark, Finland, Hungary, Iceland, Israel, Japan, Korea, Norway, the Nordic Patent Institute, Portugal, Russia, Spain, Sweden, United Kingdom, and the United States.
Under the GPPH pilot program, applicants can make a PPH request based on favourable national or international (PCT) ‘work products’ to any or all of the 17 participating patent offices. A favourable work product includes a Notice of Allowability or, within the framework of the PCT, a favourable written opinion or international preliminary report on patentability.
GPPH pilot program’s eligibility requirements resemble those of existing bilateral PPH programs and include:
• applications filed in participating offices must share a common earliest priority or filing date;
• the office of earlier examination must have found at least one claim allowable; and
• all claims presented for examination under the PPH program must sufficiently correspond to at least one of the claims found allowable by the office of earlier examination.
In addition to the above requirements, to be eligible for participation in the GPPH pilot program in Canada, the Canadian application must not yet have been examined and must be published. An applicant can make a request to have an application opened to public inspection before the expiry of the 18-month confidentiality period. Also, Office Actions issued by an office of earlier examination that are unavailable via an electronic dossier system must be provided (in English or French).
A PPH-qualifying Canadian application is usually examined within several months and, in most cases, the claims allowed in other jurisdictions are also allowed in Canada. According to CIPO, as of September 30, 2013, the grant rate was 88% (compared to 53% for non-PPH applications); the average pendency from a PPH request to the first Office Action was 1.8 months (compared to 18-30 ); the average pendency from a PPH request to a final decision was 5.4 months (compared to 41 months); the average number of Office Actions was 0.6 (compared to 1.5); and the allowance rate without a first Office Action was 43% (compared to 4.5%). This means significant cost and time savings for applicants. However, peculiarities in Canadian patent law require careful consideration when entering the PPH. For example, methods of medical treatment claims are generally not allowed in Canada; however, it may be possible to obtain claims with similar scope through reworded “use” claims.
Also, the Canadian Intellectual Property Office (CIPO) offers a unique strategy for fast-tracking PPH-qualifying applications. The CIPO’s ‘special order’ program provides a first office action within 60 days of making a request and paying the required fee. Such a request can be made only if the application is published and a request for examination has been made. The CIPO can, accordingly, be used as the office of earlier examination for PPH requests in participating offices to expedite prosecution in other patent offices participating in the GPPH pilot program.
In addition to participation in the GPPH pilot program with the patent offices of the countries mentioned above, the CIPO has bilateral PPH programs with the patent offices of China, Germany and Mexico. Notably, the CIPO does not yet have a bilateral PPH program with the European Patent Office (EPO), and the EPO has yet to join the GPPH pilot program.