Canada/China Patent Prosecution Highway Program: Three Years in Brief

Canada/China Patent Prosecution Highway Program: Three Years in Brief

Since September 1, 2013, the Canadian Intellectual Property Office (“CIPO”) and the State Intellectual Property Office of the People’s Republic of China (“SIPO”) have been participating in a patent prosecution highway (“PPH”) pilot project, a project which in principle allows innovative entities to seek and achieve patent protection on both sides of the Pacific Ocean more quickly and more cost-effectively.

Generally, the PPH pilot project permits patent applicants to accelerate the examination of a corresponding second patent application in a second jurisdiction (the “second application”), based on the allowance or registration of a corresponding first patent application in a first jurisdiction (the “first application”). Under a PPH request, the patent office examining the second application takes into account (hopefully with a favourable view) the examination history of the first application. The Canadian patent office does not charge a fee for receiving PPH requests under the PPH pilot project between CIPO and SIPO.

The PPH pilot project between CIPO and SIPO has a current sunset date of August 31, 2018.[1]  Based on data tabulated up to December 2016, the number of applications participating in the PPH pilot project between CIPO and SIPO has steadily increased since its inception[2]:

This is a promising sign, and suggests that at least some Canadian and Chinese applicants are considering the potential benefits of the PPH pilot project between CIPO and SIPO.

Relative to other Asian jurisdictions like Japan and the Republic of Korea, however, the number of PPH requests coming from Chinese applicants pales in comparison both numerically and proportionally. Referring to the immediate past three years of 2014, 2015, 2016, and years where CIPO had PPH pilot projects in place with China, Japan, and the Republic of Korea, the following number of inbound PPH requests from Chinese, Japanese, and South Korean applicants were reportedly received at CIPO[3]:

Over approximately the same time period, the following inbound patent applications from Chinese, Japanese, and South Korean applicants were reported received at CIPO[4],[5],[6]: