Riding the Patent Prosecution Highway Without Paying a Toll

Published May 8th, 2017

With the closing of the fiscal year, companies everywhere are reviewing their 2016 IP spending and looking for ways to lower their patent costs in 2017.  One such avenue available in Canada is the Patent Prosecution Highway (PPH).

The PPH is a mechanism that allows patent applicants to fast-track examination of their patent applications in Canada based on allowed claims from counterpart applications in other jurisdictions.  The current Global PPH (GPPH) began under the program name “Mottainai” which is a Japanese word meaning a sense of regret concerning waste when the intrinsic value of an object or resource is not properly utilized.  It is this principal of reducing waste that underlies the value of the GPPH.  Currently, the GPPH includes 21 different intellectual property offices including: USPTO, DPMA (German patent office), IP Australia, SIPO (Chinese patent office) and the EPO.

Canadian applications that are open for public inspection (i.e. published) and for which examination has been requested are eligible for examination under the GPPH.  In Canada, examination is not automatic, but must be requested within 5 years of the filing date.  The Canadian application must have claims that significantly correspond to allowed claims from an earlier examined counterpart application that shares the same priority date as the Canadian application.  A voluntary amendment to amend the Canadian claims to significantly correspond to the allowed claims can be submitted with the GPPH request.  The Canadian patent office has defined “significantly correspond” as including claims that are narrower in scope.  A request for entry into the GPPH is free of charge and if successful, advances examination of the Canadian application out of its routine order.

Generally, the first communication from the Canadian patent office (allowance or an Official Action) is received approximately 17 months from requesting examination compared to 3 months if the GPPH is employed.  Furthermore, 40% of patent application examined under the GPPH receive a first action allowance compared to 4% for all patent applications.  The GPPH significantly reduces costs and time associated with prosecution, and therefore increases useable patent term.  Companies looking to save money on patent prosecution in 2017 should look to the GPPH in Canada.  While the GPPH may not be suitable for all circumstances, significant costs saving can be enjoyed if the GPPH is employed effectively and efficiently.

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