January 15, 2015 By: Taiji Yoshino
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The new Patent Prosecution Highway (PPH) Pilot Agreement between the Canadian Intellectual Property Office (CIPO) and the European Patent Office (EPO) began on January 6, 2015, and will run for a period of three years, ending on January 5, 2018. Canada is already participating in a multilateral Global PPH Pilot that began on January 6, 2014, as well as a number of other bilateral PPH pilot agreements with other countries.

Under the new CIPO-EPO PPH Pilot program, applicants whose claims have been found to be patentable by either CIPO or the EPO can request accelerated processing of their corresponding applications that are pending before the other office. The program facilitates the sharing of information on existing work results between CIPO and the EPO, including EPO national and Patent Cooperation Treaty work products.

An applicant can file a request for accelerated examination under the PPH to CIPO by submitting a completed PPH request form, and the required documents by mail, fax, or electronically through the Industry Canada website. At present, regular fees for requesting examination will apply, without additional fees for advanced prosecution.

PPH requests will be considered by an Examiner, and, if all requirements are met, the Examiner will conduct an accelerated examination. Claims will need to be filed or have entered the national phase at CIPO on or after January 6, 2015, and correspond sufficiently with one or more of the claims indicated as allowable under the PPH Agreement in order for a request for accelerated examination to be granted.

The CIPO and EPO PPH Pilot is an important development for innovative Canadian businesses seeking to extend their patent protections into the European market, and will contribute to increasing Canada’s status as an attractive jurisdiction for patent applications. For more information, you can also read our September 29, 2014 blog post, Canadian Intellectual Property and European Patent Offices Build a Patent Prosecution Highway, visit CIPO’s PPH webpage, or contact one of our Intellectual Property professionals

This content is not intended to provide legal advice or opinion as neither can be given without reference to specific events and situations. © 2017 Nelligan O’Brien Payne LLP.