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 in September 2013. This agreement was supposed to last from September 1, 2013, to August 31, 2015.
A three-year extension of the PPH pilot project to August 31, 2018 was recently announced. There have been no changes to the requirements or processes of the CIPO-SIPO PPH pilot project.
What is this program about?
The PPH program allows for an acceleration of the examination process of a patent application under specific conditions. The PPH program allows an applicant who has allowed claims in one country to amend their claims in a second country to substantially correspond to the allowed claims. The prosecution details are shared between the two patent offices. As with all PPH pilot projects, requests for advanced prosecution under PPH are made free of charge.
What do the statistics show?
Statistics between July 2014 and December 2014 show that patent applications granted under regular examination in Canada had an average first office action pendency of 14.4 months and an average final report pendency of 31.9 months. This means that the average time taken from the examination request to the issuance of a first office action was 14.4 months and the average time taken from the examination request to the issuance of a notice of allowance was 31.9 months.
On the other hand, during the same period, patent applications being granted in Canada under the examination of PPH had an average first office action pendency of 1.2 months. The final report pendency was 5.4 months. Patent applications being granted in Canada between the time period of July 2014 and December 2014 under all PPH pilot projects averaged 0.7 office actions prior to granting.
Over the same period in China, patent applications granted in China under PPH examination had an average first office action pendency of 2.5 months, while the final report pendency was of 10.1 months. Patent applications granted in China between the time period of July 2014 and December 2014 under all PPH pilot projects averaged 1.5 office actions prior to granting.
The CIPO-SIPO PPH pilot project is an under-utilized program. Only 41 patents were received by CIPO with a request for PPH examination based on the prosecution results of a counterpart Chinese patent application. At the same time, SIPO received only 8 patent applications with a request for PPH examination based on the prosecution results of a counterpart Canadian patent application, as of June 2015. The extension of the CIPO-SIPO PPH pilot project until August 31, 2018, provides applicants with the opportunity to protect their inventions in both Canada and China and potentially lower the cost of the patent prosecution.