All You Need To Know About The Canadian Patent Prosecution Highway

Canada is a participant within the international framework of Patent Prosecution Highway (PPH) created primarily to simplify and speed up the process of patent prosecution. An individual is entitled to file for a patent in multiple countries. Patent applications are examined in each country in which they are filed and this process can be complicated and time consuming. With the rise in prominence and scope of the Patent Prosecution Highway, the process may be sped up and simplified.

For example, since the Canadian Intellectual Property Office (CIPO) and Germany (German Patent and Trade Marks Office) have a bilateral Patent Prosecution Highway in place, an individual can apply for a fast-tracked patent prosecution process in Canada, provided that their application has been approved by the German jurisdiction. To avail the benefit of the Patent Prosecution Highway program, a bilateral agreement between the two countries is imperative.

Eligibility

• An application for the Patent Prosecution Highway is only considered if the claim has been approved by an Office of Earlier Examination or the OEE
• The application is eligible if the cognate application and the imminent Canadian application have the same priority and filing date
• It is also essential that the impending claims match the claims that have been previously allowed by the Office of Earlier Examination
• The application is eligible only if the application hasn’t been examined yet
• It is vital that the actions issued by the Office of Earlier Examination are presented to the CIPO, either in English or French, provided the claims are not available through the electronic dossier system

Advantages

In comparison to a standard patent application request received by the Canadian Intellectual Property Office, which takes approximately 33 months to receive a final decision, a PPH request takes roughly six months. A patent lawyer or agent may be able to assist with further decreasing the amount of time it takes to receive a final decision. The Canadian Intellectual Property Office generally issues the first office action more than 14 months after the examination fee is paid. The first office action is generally received only 2-months after a Patent Prosecution Highway request is made.

Success Rate

For an average PPH request, the number of office action reads 0.7 in comparison to the 1.5 office actions common for standard patent requests. Now, to the greatest of these statistics, 40% of all PPH applications advance to the allowance stage without the necessity of an office action. This is ten times more than the percentage of standard applications, regardless of the type of patent.

The Patent Prosecution Highway is a success in Canada regardless of the metric we choose. The patents are granted at a rate far higher than standard applications, and the process remains surprisingly cost-effective while not compromising the quality of the examination.

The complicated legal framework, however, is a matter for prospective inventors and startups to consider. Going through the patent process on your own leaves you susceptible to a variety of errors. Patent lawyers and agents are well-versed with the workings of the Canadian Intellectual Property Offices and can prevent common errors from occurring. It is highly recommended that you consult patent lawyers or agents when dealing with such complex legal matters.