Canada/China patent prosecution highway program benefits

As previously reported in our article from October 2013, the Canadian Intellectual Property Office ("CIPO") and the State Intellectual Property Office of the People’s Republic of China ("SIPO") entered into a patent prosecution highway ("PPH") pilot project agreement that was scheduled to last from September 1, 2013 to August 31, 2015.

On August 27, 2015, CIPO and SIPO announced a three year extension of the CIPO-SIPO PPH pilot project to August 31, 2018.¹ No changes to the requirements or processes of the CIPO-SIPO PPH pilot project were made.²

In brief, the PPH program allows applicants to significantly accelerate the examination of a first patent application in a first partner office if a corresponding second patent application in a second partner office has been allowed by the second partner office. To accelerate the examination of the first patent application, an applicant will conform the pending claims in the first patent application to the allowed claims of the corresponding second patent application. Information regarding the prosecution of the corresponding second patent application is shared between the first and second partner offices to accelerate the prosecution process. In the case of the PPH pilot project between CIPO and SIPO, such requests for advanced prosecution are made free of charge.

According to statistics taken between July 2014 and December 2014, patent applications that were granted in Canada under regular examination had an average first office action pendency (i.e. from the time of examination request to the issuance of a first office action) of 14.4 months and an average final report pendency (i.e. from the time of examination request to the issuance of a notice of allowance) of 31.9 months. In contrast, patent applications that were granted in Canada over the same period and under PPH examination had an average first office action pendency (i.e. from the time of request of examination under the PPH program to issuance of the first office action) of 1.2 months and a final report pendency (i.e. from the time of request of examination under the PPH request to the issuance of a notice of allowance) of 5.4 months. Patent applications that were granted in Canada between July 2014 and December 2014 under all PPH pilot projects averaged 0.7 office actions prior to granting (compared to an average of 1.6 office actions under regular examination).³

According to statistics taken over the same period in China, patent applications that were granted in China under PPH examination had an average first office action pendency of 2.5 months and a final report pendency of 10.1 months. Patent applications that were granted in China between July 2014 and December 2014 under all PPH pilot projects averaged 1.5 office actions prior to granting.⁴

The CIPO-SIPO PPH pilot project appears to be an under-utilized program. As of June 2015, CIPO has received a total of 41 patent applications that have requested PPH examination based on the prosecution results of a counterpart Chinese patent application. As of June 2015, SIPO has received a total of 8 patent applications that have requested PPH examination based on the prosecution results of a counterpart Canadian patent application.⁵ The extension of the CIPO-SIPO PPH pilot project until August 31, 2018 gives inventors in both China and Canada an extended opportunity to protect their innovations in both countries at lower patent prosecution costs.