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for possible implementation after next January and could even end early if, for example, the "volume of participation exceeds manageable levels." Graham McKinnon, a patent agent with Smart & Biggar in Vancouver, says the profession wasn't pressing hard for the new PPH but is nonetheless happy to have it as an additional tool. "There's more work associated with requesting expedited exam in the U.S., so I think this tool is potentially very helpful from a U.S. prosecution perspective," he says. There will be some applicants who will be able to take advantage of the program and obtain issued patents faster, says McKinnon, as well as other situations where the PPH won't be a good tool. The difference between the two will depend, in some aspects, on technology. "Some technology fields I think will be in a better position to take advantage of the prosecution highway," he says. An example of an area where the PPH may have some problems is the pharma sector, he says, where the sorts of claims that might be allowed in Canada may or may not be considered similar in scope to the "method of treatment claims" al- lowed in the U.S. "I think that those are the sorts of things that you have to think about when you are deciding whether or not this is a good tool to use." Wing Yan, a lawyer and patent agent with Nelligan O'Brien Payne LLP in Ot- tawa, says he is optimistic the program will be implemented full time upon completion of the pilot project. He adds it is probably too early to predict any significant positive or negative impact from the pilot but "according to the existing PPH pilot program, and con- sidering the different requirements for requesting a regular accelerated exami- nation between USPTO and CIPO, PPH could minimize procedural burdens, especially for Canadian applicants to re- quest an accelerated examination at the USPTO." Considering there are strict require- ments for obtaining an accelerated ex- amination from a patent office, the most notable advantage of PPH is that it pro- vides a much simpler alternative for re- questing this type of examination, says RANGE & DEPTH One of Canada's leading intellectual property law firms, Bereskin & Parr combines proven expertise with a dedication to service that has earned lasting trust from many of the world's most original thinkers. Yan, and could shorten the time it takes for a patent to be issued. He says as procedural requirements for requesting an accelerated exami- nation at USPTO are much more dif- ficult than those in Canada, and since PPH will waive the procedural burden at USPTO, "it will confer more ben- efits to Canadians requesting PPH at USPTO than our counterparts in the United States requesting PPH at CIPO. This may affect the prosecution and/or filing strategies of Canadian applicants in [the] long run." For the unwary, there may be some BereskinParr_Dec7.qxd 12/7/07 12:16 PM Page 1 drawbacks to the program, says McKin- non, although it seems to be reasonably well thought out and has been tried in other jurisdictions. "I don't think there's drawbacks if your application is in the right state, but I think, if it's not, you can potentially reduce the scope that www.bereskinparr.com www. C ANADIAN mag.com M AY 2008 51