Frequently Asked Questions about the Patent Prosecution Highway
- Requirements for filing a PPH request
- Procedures for filing a PPH request
- Filling in a PPH request form
- Office of Earlier Examination (OEE) - specific questions
- PCT-PPH frequently asked questions
- Procedures for examining a PPH application
Requirements for filing a PPH request
One of the eligibility requirements to enter the PPH program is that CIPO must not have begun substantive examination of the application. How will I know if substantive examination has begun?
Substantive examination is considered to have begun on the date when CIPO issues a first office action, i.e., an examination report, including one that defers examination of the claims, or a notice of allowance.
Because a first office action could occur at any time after the request for examination applicants wishing to participate in the PPH program should submit a PPH request without delay after receiving an indication from the OEE that their claims are allowable.
Can a PPH request be made based on more than one corresponding patent application from the Office of Earlier Examination (OEE)?
Yes, at CIPO the PPH request can be based on more than one corresponding patent application of the OEE.
Can a PPH request be made based on more than one Office of Earlier Examination (OEE)?
No, at CIPO the PPH request cannot be based on work products from multiple OEEs.
Can a PPH request be made based on claims indicated as allowable in a combination of international PCT work products and national work products?
No, at CIPO, such a request would not be granted. CIPO considers an Office in its capacity as International Searching Authority and/or International Preliminary Examining Authority to be a different Office than its national Office. Therefore, the PPH request cannot be based on a combination of claims found to be allowable in the national and international phases as such a request is considered to be based on more than one OEE.
What does "sufficiently correspond" mean?
Claims shall be considered to sufficiently correspond where the claims on file are of the same or similar scope as the claims in the Office of Earlier Examination (OEE), or the claims on file are narrower in scope than the claims in the OEE.
In this regard, a claim on file which is narrower in scope occurs when an OEE claim is amended to be further limited by an additional technical feature that is supported in the specification (description and/or claims). A claim on file which introduces a new/different category of claims to those claims indicated as allowable in the OEE is not considered to sufficiently correspond. One exception to this statement is where the new/different category of claims at CIPO are medical use claims that replace methods of medical treatment claims in the OEE application. The medical use claims, while being a new/different category of claims, will be considered to sufficiently correspond where the scope of the claims is the same or narrower than the OEE methods of medical treatment claims.
If the examiner determines that the claims on file do not sufficiently correspond to one or more of those claims indicated as allowable in the OEE, the applicant will be notified that the request for accelerated examination is not granted.
Can a PPH request be made if the CIPO application is not currently open to public inspection?
A requirement to be accepted into the PPH program at CIPO is that the CIPO application must be open to public inspection. Therefore the applicant must include a request that the application be opened to public inspection with the PPH request or the request will not be granted.
Conveniently, CIPO's PPH forms include a feature where the applicant can request the Canadian patent application be opened to public inspection.
A request for examination has yet to be made; should this request be made with the PPH request?
Yes, a requirement to be accepted into the PPH program at CIPO is that the applicant must have requested examination of the CIPO application. The request for examination and the payment of the prescribed fee should be made with the request for accelerated examination under the PPH.
If a divisional application is filed based on a parent application that is within the PPH, is the divisional application automatically given PPH status?
No, a divisional application arising from a parent PPH application is not automatically given PPH status. If an applicant wishes a divisional application to be entered into the PPH, the applicant must submit a new PPH request and include all necessary documents for the submission (request form, allowed claims, OEE office actions, translation, etc.). The new PPH request may be submitted at the same time as the request for a new divisional application.
Am I required to submit the Office of Earlier Examination (OEE) claims that have been indicated as being allowable and the OEE work product(s) which indicate the allowability of the claims?
Yes you are required to submit the OEE claims and OEE work product(s) which indicate the allowability of the claims if they are not available via a Dossier Access System (DAS).
If the OEE claims and OEE work product(s) are available via a DAS you have the option to request CIPO retrieve them. On the appropriate section of the request form you should identify the DAS and the relevant supporting documentation by name and date as it appears in the DAS.
To what extent will CIPO accept machine translations into English or French of the OEE work product(s) and OEE claims?
When machine translations of supporting documentation are provided, CIPO will assess supporting documentation to the maximum extent possible. The machine translations must be clear enough for the examiner to determine that the OEE claims were indicated as allowable and that the OEE allowable claims sufficiently correspond to the claims on file.
In the case where CIPO is asked to retrieve supporting documentation from a Dossier Access System (DAS) CIPO will use machine translations available through the DAS to assess supporting documentation to the maximum extent possible.
In the case where machine translations, either submitted to CIPO or available through a DAS, are determined by the examiner to be of insufficient quality, the PPH request will not be granted.
If the work product(s) and OEE claims are not available in English or French on the DAS and a machine translation of these documents into English or French is not available through the DAS, a translation (machine or otherwise) of these documents into English or French must be provided.
Procedures for filing a PPH request
What is required for filing a complete PPH request?
The applicant is required to provide the following:
- a completed PPH request form;
- the relevant supporting documents (OEE work product(s) and OEE allowed claims);
- a request for examination and payment of the prescribed fee if such a request has yet to be made; and,
- an authorization to make the application open to public inspection if the application is currently not public.
The PPH request form should be the uppermost document to ensure that the request is correctly processed. All subsequent correspondence with the office must be clearly identified as relating to a PPH application to ensure that the correspondence is correctly processed. This can be done by clearly marking each part of your submission with the term “PPH”, preferably in the upper right corner of each page.
Note: The PPH request must be accompanied by, or preceded by a request for examination and/or an authorization to make the application open to public inspection. If at the time of making the PPH request the applicant also requests examination and/or authorizes the application be open to public and the latter are sent under separate cover processing may be delayed.
Is a completed claim correspondence table required even if the claims amended with the PPH request are identical to the allowed/granted Office of Earlier Examination (OEE) claims?
Yes. If a claim correspondence table is not submitted and the examiner cannot easily ascertain the correspondence without it, the PPH request will not be granted.
In the case where the CIPO application claims are not identical to the corresponding Office of Earlier Examination claims the applicant should provide an explanation regarding the claims correspondence to help the examiner to properly determine if the claims sufficiently correspond.
I am making voluntary amendments to the claims at the same time as filing a PPH request. Are there any specific things I should do to help ensure the application is processed correctly?
Yes, all correspondence relating to a PPH application should be clearly labelled “PPH”, preferably in the top right corner of the first page. This will help ensure the correspondence is processed correctly without undue delay.
Filling in a PPH request form
How do I fill in the Global PPH form when I am making a request based off more than one application from an OEE? The form appears to only have room for information for one application.
Step 1: In the field labelled “OEE Application Number (Includes PCT Application Number)” you can enter multiple application numbers on the same line or you can press the enter key and type on additional lines. The text box field will expand to accommodate multiple lines of text.
Step 2: In the fields labelled “OEE Application Filing Date” and “OEE Application Priority Date” enter in the appropriate field the earliest date from amongst the OEE applications. The OEE applications must have the same earliest date and this date must match the earliest date of the CIPO application to be eligible for the PPH program.
Step 3: In Section C. “Required Documents” for administrative reasons you should attempt to either provide a copy of the OEE work product(s) and OEE claims for all the OEE applications or request that the office retrieve them for all the OEE applications. If you decide to submit some of the documents for one or more OEE applications and also ask the office to retrieve some documents for one or more of the other OEE applications you should select the radio button titled “The office is requested to retrieve documents via the Dossier Access System or PATENTSCOPE” in the appropriate portion of subsection C.
Step 4: In Subsection V. “Identification of Documents” you should clearly indicate each OEE application number as well as the document's name when the PPH request is being made based on more than one OEE application.
Step 5: In Section D. “Claims Correspondence” you should clearly indicate the relevant OEE application number on each row of the column titled “Explanation regarding the correspondence”.
How do I determine which PPH form to use?
The appropriate PPH form is determined by the identity of the Office of Earlier Examination (OEE). On our website under the heading “CIPO's PPH Agreements” locate the row with for the appropriate OEE and the correct form will be listed in the column titled “Request Forms”.
Regarding Section E. “Box VIII Observations (for PPH requests based off international work products only)”, the PPH request I am submitting is based on claims indicated as allowable by the OEE in a national work product. There is a corresponding PCT application with Box VIII observations. Am I required to fill in this section and provide an explanation of why the claims are not subject to the observation described in Box VIII?
No, this section is only used for a PCT-PPH request. A PCT-PPH request is one in which the request is based off claims indicated as allowable in a PCT international work product.
What do I enter in Section F. “Other amendments to application (optional)”?
Clicking either radio button* in this section is optional and you do not have to fill in this section of the form for the PPH request to be granted. Also any amendments to the application beyond those necessary to ensure the CIPO claims correspond to the OEE claims is optional.
CIPO does recommend that you do review the application for defects before making a PPH request and that you make voluntary amendments to align the application with Canadian practice and Canadian law at the time of making the PPH request.
*NOTE: Once a radio button is selected the form will not permit you to revert to having both boxes unchecked.
Office of Earlier Examination (OEE) specific questions
United States (Global PPH program)
What are the USPTO national work products you will accept where it would be indicated that corresponding claims are considered to be allowable?
Corresponding claims are considered to be allowable as indicated in the following USPTO national documents:
- a US Letters Patent;
- an Office action;
A USPTO Office action includes a "Non-Final Rejection", "Final Rejection", "Ex parte Quayle", and a "Notice of Allowability".
Can a PPH request be made if the CIPO application claims priority to a USPTO provisional patent application and if a USPTO national application claiming priority to the same USPTO provisional patent application is determined to be allowable by the USPTO?
Yes, because the USPTO national application and the CIPO application both share the same earliest date; the filing date of the USPTO provisional patent application.
Please note: Where the USPTO national application claims internal priority or is a continuation-in-part of more than one application, the earliest date of the USPTO national application is the earliest date of the related U.S. applications.
European Patent Convention (EPC) Contracting states (Global PPH program)
Is validation of the European Patent by a GPPH EPC partner office sufficient for eligibility in the GPPH program?
No, the corresponding application must have been examined by, not merely validated by, the GPPH EPC partner office for eligibility in the GPPH program. For example, an application in which examination was conducted in the European Patent Office (EPO) and the patent right was validated in Denmark as a designated state, would not be an eligible application in the GPPH program. Because the Office of Earlier Examination was in this case the EPO a request would need to be made via the CIPO-EPO PPH program.
PCT-PPH frequently asked questions
Will an international application which has received a favorable opinion in terms of novelty, inventive step, and industrial applicability for at least one claim still be eligible for the PCT-PPH if there are observations noted in Box VIII of the WO-ISA, WO-IPEA or IPRP?
Yes. For PCT-PPH work product based requests with observations described in Box VIII of the WO-ISA, WO-IPEA or IPRP the applicant must identify and explain why the claim(s) is/are not subject to any observation described in Box VIII.
Are all PCT applications eligible for the PCT-PPH program, regardless of which International Authority actually performed the international search and preliminary examination?
No, the International Authority who performed the international search and preliminary examination is considered to be the Office of Earlier Examination (OEE) and the OEE must be a PCT-PPH partner office to CIPO.
Procedures for examining a PPH application
How is a PPH application treated in examination?
A PPH application undergoes "regular examination": it is treated in the same manner as any application undergoing national prosecution. Examiners will apply The Canadian Patent Act and Rules, identifying any defect, including citing prior art, non-statutory subject matter and support. Applicants still have the six-month time limit to respond to any office actions by examiners and may still request meetings with examiners to further prosecution. As with all "regular examination" if there is an impasse in prosecution, a final action may be written and the application may be forwarded to the Patent Appeal Board where the advanced processing of the application under the PPH ends.
What is the timeline for receiving a first office action (Notice of Allowance or examiner's report) from CIPO in response to a PPH request?
The 2015-2016 client service commitment is to process and issue a first office action within 3 months upon receipt of a PPH request that complies with the requirements for accelerated examination under the PPH. The expectation is this service standard will be met at least 90% of the time. If the first action is a Notice of Allowance, the applicant may not receive the first action within 3 months from the date the PPH request is made due to the additional processing that is required.
It has been more than 3 months since I made a PPH request and I have not received a first office action. Who should I contact?
If 3 months has elapsed since making a PPH request and you have not received a first office action you could request a status update by e-mailing the PPH Project Coordinator or by contacting the Client Service Center.
Will CIPO issue a courtesy letter indicating that the PPH request has been received and granted?
No, CIPO will not issue a courtesy letter indicating that the PPH request has been received by the office. The first correspondence from CIPO will be in the form of a first office action (Notice of Allowance or examiner's report) or an office letter indicating why the PPH request is not granted.
When is a request for accelerated examination under the PPH not granted?
A request for accelerated examination under the PPH will not be granted if the application does not comply with the requirements for requesting accelerated examination under the PPH. A complete list of eligibility requirements for each of our PPH agreements is available on our PPH main webpage.
The most commonly occurring reasons PPH requests are not been granted are as follows:
- All of CIPO claims do not sufficiently correspond to the claims indicated as being allowable in the OEE;
- The applicant has not made a request for examination and/or has not paid the prescribed fee for requesting examination;
- The applicant has not made a request to open the application to public inspection;
- The applicant has not included the relevant documentation needed to support a request for accelerated examination under the PPH, including amendments or translations of previously allowed OEE claims and OEE work product(s);
- The applicant has requested CIPO to retrieve the relevant documentation needed to support a request for accelerated examination under the PPH; however, the examiner was unable to locate the documents.
- The examination of the application has already commenced;
- The CIPO application for which participation in the PPH is requested and the corresponding OEE application(s) do not have the same earliest date (whether this is a priority date or a filing date); and
- The Office of Earlier Examination (OEE) does not have a PPH agreement with CIPO.
If an office letter denies the PPH request only due to claims that do not sufficiently correspond to those allowed by the Office of Earlier Examination (OEE), can the applicant, in order to maintain PPH eligibility, simply amend the claims?
No, however, as long as substantive examination has not begun the applicant can voluntarily amend the claims and re-apply to enter the PPH program.
If an application is removed from PPH during prosecution (i.e. after at least a first office action), can an applicant reapply to have the application re-enter the PPH?
No, if an application has been removed from the PPH program during prosecution, the applicant cannot apply to re-enter the PPH program. This is consistent with CIPO's practice of not granting PPH requests on applications where substantive examination is considered to have begun.
For this reason, if the applicant wishes for their application to remain in the PPH program after substantive examination has begun care should be exercised when amending the claims to ensure they sufficiently correspond throughout prosecution to those considered allowable by the Office of Earlier Examination.
If the claims allowed by the Office of Earlier Examination (OEE) contain subject matter that is non-statutory in Canada will my PPH request be granted?
An application containing claims to non-statutory subject matter may still receive accelerated examination under the PPH if the claims on file sufficiently correspond with those allowed by the OEE. The presence of claims to non-statutory subject matter will not be a reason to remove an application from the PPH without having first given the applicant the opportunity to address the defect by way of amendment or argument.
While some claims are clearly and obviously directed to non-statutory subject matter, often claims are in a grey area and an examiner will make a determination as to whether the claims contain any non-statutory subject matter during examination. The examiner's report will indicate that the claims contain non-statutory subject matter according to the Canadian Patent Act, Patent Rules and the Manual of Patent Office Practice (MOPOP). Applicants should amend the claims to conform with the Patent Act, Patent Rules and MOPOP accordingly.
An examiner can remove an application from the PPH program if the applicant is not willing to amend claims to remove the non-statutory subject matter or does not provide persuasive arguments as to why the claims are statutory. The reason for this is that a goal of the PPH program is to expedite prosecution with a view towards allowance of the application and not towards an impasse between the applicant and the examiner.
Are amendments to the claims entered regardless of whether the PPH request for accelerated examination is granted?
Yes, all amendments to the claims made with the request for accelerated examination under the PPH agreement will be entered, regardless of whether the request is granted or not.
If a PPH application is abandoned in accordance with subsection 73(1) of the Patent Act, will it receive accelerated examination under the PPH once the application is reinstated?
Yes, if a PPH application has been abandoned in accordance with subsection 73(1) of the Patent Act, the application will still be advanced for examination out of routine order, once it is reinstated.
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