Canadian Lawyer InHouse

11 CANADIANLAWYERMAG.COM/INHOUSE SEPTEMBER 2015 By Kenneth Ma Intellectual Property T he Patent Prosecution Highway pilot pro- gram between the Canadian Intellectual Property Office and the European Patent Office came into effect Jan. 6, 2015. The program will last for three years, ending Jan. 5, 2018. If past history is any guide, the CIPO- EPO PPH program will be extended or made perma - nent at that time. The program aims to accelerate pat- ent examination for applicants who file in both CIPO and EPO. The PPH is an international framework in which patent examination may be expedited if the claims are found allowable in another jurisdiction. CIPO is currently engaged in PPH pilot programs with about 20 other jurisdictions and often issues its first examination report or allowance within 90 days after the PPH request is approved. This is much faster than the usual pace of examination, where the first examination report is usually received within about 10 to 20 months after the request for examination. Under the new CIPO-EPO PPH program, patent applicants whose claims have been found to be patentable by either CIPO or EPO now have the option to ask for accelerated processing of their corresponding applications that are pending before the other Patent Office. There is no government fee for a PPH request beyond the usual examination fee that applies to all applications. A PPH request to CIPO based on an earlier examined EPO patent application must satisfy certain criteria, including: • The Canadian application was filed or has entered the national phase on or after Jan. 6, 2015. • The corresponding EPO application(s) must have at least one claim indicated by EPO to be allowable. When making a request under the PPH, all the claims of the Canadian application must be amended to correspond to claims in the EPO application(s). Furthermore, given that examination of a Canadian application can be delayed up to five years from the filing date, it could be advantageous for applicants to wait for claims in a corresponding EPO application(s) to be allowed before requesting examination in certain cases. Not only would this approach defer costs and streamline the application process, but, in view of Canada's strict prohibition on double patenting, this approach is recommended where multiple applications arose as a result of voluntary and/or mandatory divisional applications. In Canada, it is best to maintain all the claims of interest in one application and await any unity objections before dividing out the claims. To increase the likelihood of an early allowance, Canadian formality requirements should be addressed at the time of the PPH request. Patent documents (where not publicly available) and non-patent literature cited by the EPO may be provided with the PPH request. While provision of these documents is optional, it may further accelerate examination. Since all the claims of the Canadian application must be amended to correspond to the allowed claims in the EPO application(s), it is important to consider whether the corresponding claims are of strategic im - portance in Canada. For instance, if the applicant is interested in obtaining claims of broader scope and/or increasing the number of claims, then it may be advis- able to pursue other options for expediting the Cana- dian application. The new CIPO-EPO PPH pilot program also offers an interesting opportunity for expediting EPO application(s) based on an earlier allowed Canadian application. Under this strategy, the prosecution of a Canadian application is expedited by the use of special order or by entry into the green technology program. A PPH request can be then made in the EPO based on the earlier allowed Canadian application. Accordingly, with the new CIPO-EPO PPH pilot program, applicants now have yet another option to choose from for managing costs and for expediting examination and allowance of their Canadian and European applications. Full details of the requirements are available on the CIPO web site: www.ic.gc.ca IH Kenneth Ma is a lawyer with Ridout & Maybee LLP Fast-tracking patent applications on the CIPO-EPO highway Pilot project aims to speed examination for applicants who file in Canada and Europe.

• Cover