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16 December 2013
On January 6 2014 the new Global Patent Prosecution Highway (GPPH) pilot programme will begin to fast-track examination of eligible patent applications between participating countries.
The Canadian Intellectual Property Office (CIPO) and 12 other patent offices are part of the GPPH pilot programme. Those 12 offices are:
It is possible for additional patent offices to join the GPPH pilot programme in the future.
Under the GPPH pilot programme, a request for accelerated examination can be made at any participating office based on a favourable work product, including a Patent Cooperation Treaty (PCT) work product, from any one of the other participating offices. A favourable work product may be, for example, a notice of allowability or, in the case of the PCT, a determination that one or more claims are novel, inventive and industrially applicable.
The eligibility requirements of the GPPH pilot programme are similar to those of other existing PPH programmes. For example, to be eligible for accelerated examination under the GPPH pilot programme:
The details of all such eligibility requirements are available on the PPH portal site.
Where two participating offices have a pre-existing bilateral PPH agreement, the GPPH pilot programme will take precedence over the bilateral agreement for the duration of the pilot.
Fast-tracking examination under PPH programmes in Canada has been a phenomenal success and has positioned Canada as a highly cost-effective jurisdiction in which to procure patent protection with speed and efficacy. The GPPH pilot programme will make it even easier for patent applicants to realise such benefits in Canada, as the programme expands the number of countries that can be used as an office of earlier examination for the purposes of fast-tracking examination in Canada. For example, the GPPH pilot programme agreement includes IP Australia, the NPI, the NIPO and ROSPATENT, which did not have previous PPH agreements with Canada.
According to statistics maintained by CIPO, PPH applications have far shorter wait times for examination and receive fewer office actions. The following are some statistics from CIPO from earlier in 2013.
Time from PPH request to first-office action
On average, CIPO issues a first office action for a PPH application only 2.2 months after the PPH request is made. The overall average time to issuance of a first-office action for all applications is 18.9 months.
Time from PPH request to final decision
The average pendency of a PPH application from application to final decision (5.1 months) is considerably shorter than the overall average pendency for all applications (37.8 months).
Average number of office actions
The average number of office actions for PPH applications (0.6) is less than half that of all applications combined (1.6).
Allowance rate without office action
An incredible 45% of PPH applications proceed to allowance without the issuance of an office action. By comparison, the average number of applications overall that proceed directly to allowance without the issuance of an office action is only 5.6%.
Grant rates are also significantly higher for PPH applications (93%) as compared to all applications combined (71%).
Unlike existing bilateral PPH agreements, the GPPH pilot programme is an agreement between several patent offices around the world, and additional patent offices may join in the future. Therefore, patent applicants would be well advised to reconsider their global patent prosecution strategy in light of the GPPH pilot programme.
For example, using the GPPH pilot programme, substantive patent examination could first be requested and conducted in the participating patent office preferred by the applicant and, if the examination leads to a favourable allowance, accelerated examination could then be conducted under the GPPH pilot programme for all other participating countries of interest. Substantive examination can be deferred in many countries, such as in Canada, which makes this strategy more easily achievable.
For the GPPH pilot programme, Canada may also be a good choice as the venue in which to conduct the first substantive examination because early examination may be obtained by means other than the PPH. For example, an applicant can usually obtain a special order for expedited examination upon making a request and submitting the required fee.
The five largest IP offices in the world (known as the 'IP5') are the European Patent Office (EPO), the JPO, the KIPO, the State Intellectual Property Office of the People's Republic of China (SIPO) and the USPTO.
Three of these IP offices are participating in the GPPH pilot programme. Unfortunately, the EPO and SIPO are not part of the GPPH pilot programme. However, as mentioned above, it is possible for these (and other) offices to join the GPPH pilot programme in the future.
Additionally, at present the EPO and SIPO have bilateral PPH agreements with some countries, which presumably can be used in addition to the GPPH pilot programme. For example, a PPH pilot programme is in place between CIPO and SIPO.
For patent applicants which file in multiple countries, the GPPH pilot programme should hopefully result in faster patents at a lower overall cost. Applicants should consider whether such a programme would be of benefit to their global patenting strategy.
For further information on this topic please contact Jeff Leuschner at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486), fax (+1 613 232 8440) or email (email@example.com). The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
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