Patent “prosecution highway” gets good reviews

The European Patent Office in Munich
The European Patent Office in Munich

In 2013, Canada and 12 other countries agreed to participate in a new Global Patent Prosecution Highway pilot program that expanded the number of countries that could be used as offices of earlier examination for the purpose of fast-tracking the examination of patent applications as between the participating countries. 

“The rationale behind the patent prosecution highway is to avoid the duplication of effort by the patent offices and provide a reduced pendency for applications,” says John Orange, a Toronto-based patent agent with Blake, Cassels & Graydon LLP. “In Canada, the advantage of PPH processing is that such applications are given priority for examination.” 

Patent prosecution highways are bilateral agreements between patent offices whereby when one office has indicated that a patent is allowable, the other patent office will accelerate its consideration of the corresponding application if the claims are the same. 

Although no one may have known quite what to expect at the outset of the program, leading IP boutique Smart & Biggar/ Fetherstonhaugh has called the program “phenomenal success”. 

The participants in the expanded GPPH, which took effect on January 6, 2014, were Canada, Australia, Denmark, Finland, Japan, South Korea, Norway, Portugal, Russia, Spain, the UK, the US, and the Nordic Patent Institute, an International Searching Authority and International Preliminary Examining Authority. 

While the Japanese and European patent authorities, two of the five largest IP offices in the world, were not originally involved in the new project, the Canadian Intellectual Property Office and the European Patent Office (pictured above) have since agreed to establish a pilot program that became effective in January 2015. 

As well, Canada has since entered into a PPH pilot agreement with China. 

According to a recent Smart & Biggar IP Update, the PPH “has positioned the country as a highly cost-effective jurisdiction in which to procure patent protection with speed and efficacy.” 

The PPH process, the firm notes, has produced far shorter wait times and fewer office actions. PPH applications also have higher success rates. “The fast-tracking of patent examinations under the PPH can realize significant cost savings for applicants without sacrificing patent quality,” Smart & Biggar concludes. 

An internal study of PPH efficacy conducted by the firm between January 2014 and June 2014 found that PPH applications surpassed the CIPO average wait time for examination, number of office actions, allowance rate with no office actions and overall grant rate, in many cases by enormous margins. 

But Orange cautions that PPH processing is not the be all and end all from a practitioner's perspective. 

“The main difficulty is that patent laws and procedures have not been completely harmonized and that can lead to problems,” he says. 

One difficulty stems from the fact that patent applications commonly include different categories of claims such as apparatus, method and product. In Canada, such claims can usually be filed in a single application so long as they have a common inventive feature. The US, however, regularly requires the assignment of the invention to one category of claims. 

“For example, in the US the allowed claims may be directed to an apparatus and the method or product claims filed in a continuation or divisional application,” Orange says. “Similar issues may arise in the prosecution of chemical compound patents.” 

The upshot is that Canadian claims could not access the PPH unless they were similarly restricted. 

In most countries, claims cancelled to bring an application into PPH conformity could be prosecuted in a subsequent “divisional application”. But Canada espouses the double patenting doctrine, which prevents the issuance of two patents covering the same invention. 

“A divisional application in Canada is vulnerable to a double patenting attack unless the Canadian examiner has expressly indicated that the claims on file are directed to more than one invention,” Orange says. 

In the case of a PPH application, claims must be amended to conform to the allowed claims before examination, meaning that there will no opportunity for an examiner to indicate that more than one invention is involved. 

“One possibility is to wait for the divisional US application to be allowed and request a based on both allowed sets of claims,” Orange says. “But usually that creates delay while the second application is being examined.” 

One can also file for expedited examination, however this requires a large fee.