Patent Prosecution Highway (PPH) in Canada allows applicants to significantly accelerate examination of patent applications at the Canadian Intellectual Property Office (CIPO). PPH may be available if a corresponding PCT or foreign patent application has been deemed allowable by one of CIPO’s PPH partners, either through a global PPH (GPPH) pilot program or through bilateral PPH pilot programs. The GPPH includes PCT-PPH and those with United States Patent and Trademark Office (USPTO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), or IP Australia. The bilateral PPH, for example, includes those with the European Patent Office (EPO) or China National Intellectual Property Administration (CNIPA).

To be eligible to enter the PPH program in Canada, the following requirements must be met:

• the Canadian application and the corresponding foreign application based on which PPH is requested must have the same earliest priority or filing date;
• one or more claims of the corresponding foreign application must be found allowable by the Office of Earlier Examination (OEE) in any substantive work product from the OEE;
• all claims of the Canadian application for examination under the PPH program must sufficiently correspond to the one or more claims found allowable by the OEE by having the same or similar scope as the claims in the OEE, or a narrower scope than the claims in the OEE;
• the Canadian application must be open to public inspection and a request for examination of the Canadian application must have been filed; and
• substantive examination on the Canadian application must not have begun, for example, before CIPO issues a first office action.

The completed PPH request form must be submitted to CIPO, along with the OEE claims and OEE work product(s) which indicate the allowability of the claims if they are not available via the OEE’s Dossier Access System (DAS) or PATENTSCOPE, and translations thereof if they are not available in English or French. No official fee is required to request examination under the PPH program.

When preparing the PPH request, if the claims of the Canadian application are not identical to the corresponding OEE claims, the applicant should provide an explanation in a claims correspondence table to help the examiner to properly determine if the claims sufficiently correspond.

When amending the claims throughout the examination, it is necessary to ensure that the amended claims continue to sufficiently correspond to those allowed by the OEE to keep examination of the application under the PPH program.

Once a Canadian application is accepted into the PPH program, the examination of the application runs considerably faster. For example, based on CIPO’s performance target, a first Office Action can be expected within 3 months after a PPH request 90% of the time.

While a PPH request can be made based on more than one corresponding application from an OEE, it cannot be made based on work products from multiple OEEs. For an application with corresponding applications in multiple OEEs with different allowable claim scope, a choice needs to be made on the single OEE for the PPH request.

If there is an interest in filing any divisional and/or continuation applications in any foreign jurisdiction, and ultimately pursuing these additional claims in Canada, then further consideration should be given before making a request to enter the PPH program based on the parent application/patent.

Two alternative routes for accelerating examination available in Canada include Special Order (SO) examination or those that relate to “green” technology applications. The SO examination requires a payment of a government fee and a statement indicating that failure to advance the examination is likely to be prejudicial. The “green” technology route requires a statement that the application would help resolve or mitigate environmental impacts or conserve the natural environment and resources. As compared to the 17 months for regular examination according to CIPO’s current performance targets and client service standards, a first Office Action can generally be expected within 7 months for a Special Order or within 36 weeks for patent applications relating to “green” technology after a request is filed.

However, if the application is or was deemed to be abandoned, an extension has been granted, or a compliant Request for Continued Examination (RCE) has been received at the CIPO, both alternative options to accelerate prosecution will no longer be available. On the other hand, an application accepted into the PPH program will not be removed from the PPH programs for these reasons.

Thus, depending on the circumstances, entry into the PPH program may be considered an effective and cost-efficient means to accelerate examination in Canada.

Please do not hesitate to contact one of our team members to discuss available options for accelerating examination of a patent application in Canada.