On September 1 2013 the Canadian Intellectual Property Office (CIPO) and the State Intellectual Property Office (SIPO) of the People's Republic of China will commence a Patent Prosecution Highway (PPH) pilot program that will fast-track the examination of eligible patent applications between Canada and China. This will lead to quicker examination and a greater number of issued patents in both countries in much less time. Thus, eligible patent applicants filing in both China and Canada can expect to achieve significant cost savings in patent prosecution expenses.

PPH program

The PPH pilot program, which will last two years, will permit CIPO and SIPO to benefit from work already done by the other office, thereby reducing the examination workload.

Requests for expedited examination filed under the PPH based on agreements with other countries have achieved significant cost savings and faster patent grant. Similar cost savings are expected to be achieved as a result of the pilot PPH program with China.

Under the PPH, an applicant receiving a ruling from SIPO that at least one claim in an application is patentable may request that CIPO fast-track the examination of corresponding claims in corresponding applications at CIPO. Similarly, if CIPO determines that at least one claim is patentable, the applicant may request accelerated processing of corresponding applications filed at SIPO. There is no official fee for requesting fast-track examination under the PPH beyond the usual examination fee that applies to applications.

In addition to China, CIPO currently has an ongoing PPH agreement with the US Patent and Trademark Office of an indeterminate length, and pilot agreements with a number of other countries, including Japan, Germany and South Korea. CIPO has also instituted PPH pilot projects based on prior Canadian or US Patent Cooperation Treaty examination results.

According to statistics maintained by CIPO, PPH applications have far shorter waiting times for examination and receive fewer office actions. PPH applications are also granted at a higher rate.

Time from request to first office action

On average, CIPO issues a first examiner's report for a PPH application only 2.2 months after the PPH request is made. The overall average time to issuance of a first examiner's report for all applications is 18.9 months (the average pendency to the first examiner's report for all applications can vary from 18 to 32 months, depending on the subject matter).

Time from request to final decision

The average pendency of a PPH application from application to allowance (5.1 months) is considerably shorter than the overall average pendency for all applications (37.8 months). For example, one party recently received an allowance only 15 days after filing a request for expedited examination under the PPH.

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 impressive 45% of PPH applications proceed to allowance without the issuance of an examiner's report (the so-called 'first office action allowance'). By comparison, the average number of applications overall that proceed directly to allowance without the issuance of an examiner's report is only 5.6%.

Grant rate

Grant rates are also significantly higher for PPH applications (93%) than for all applications combined (71%).

Other measures for expedited examination

Other measures for expediting examination of a Canadian patent application include the use of special orders for expedited examination on payment of a government fee or in connection with patent applications relating to green technology.

Comment

The same impressive results are expected to be achieved as a result of the pilot PPH program between China and Canada.

In addition to the PPH agreement, SIPO will give Canada's patent examiners access to China's Traditional Chinese Medicine Database, a useful tool in the fight against bio-piracy.