Law Times

Law timeS • September 26, 2011 FOCUS PAGE 13 PPH opens new roads for patents Summer changes facilitate easier approval process around the globe BY KENNETH JACKSON For Law Times O btaining patents for Canadian inventors and innovators got a lot quicker, cheaper, and easier over the summer. Canada has worked out agreements with several coun- tries, including Japan and the United States, that smooth the road between patent offi ces. Th e one-year pilot project will facili- tate sharing work between them. "Th ey are giving each other credit for what work the other offi ce has done so they are not reinventing the wheel each time an applicant comes along and applies to multiple countries," says Adrian Zahl, a partner at Ridout & Maybee LLP. Typically, applicants be- gan by applying for a patent in their home country. But as they usually want protection in multiple countries, they'd apply for patents elsewhere in what would often become an expensive process. "In each country, they go through what is called pros- ecution where the patent offi ce does a search and tries to fi nd prior art, things that were pub- lished before the application was fi led," says Zahl. "Th ey then force the inventor to defend the invention. It's time-consuming for the patent examiners, too. Governments spend a lot of money — millions and millions of dollars — to support these patent offi ces." Th en applicants would end up doing the same thing in other countries over and over again. But with changes to the Patent Prosecution Highway (PPH) pilot program, it no longer had to be that way as of July 15. Canada's pilot also in- cludes Spain and Finland. Th e program aims to cut through all of the hoops and hurdles. If one patent offi ce has done a search and it has granted and allowed the claim, its counterparts in the program will do a couple of things, ac- cording to Zahl. "Th ey get expedited treatment. Instead of the usual two-to-three- [or] four-year backlog, it's done in a few months. Secondly, they won't do another patent search. Th ey'll simply apply the results of the existing search, so it's a big help to the examiners." Th e fi rst agreement Canada implemented was with the United States in January 2008. Th e following year in October, it signed new agreements with Denmark, Japan, and Korea. Th en came Finland, Germany, and Spain. Th e goal then was to speed up the application process, limitations further in a recent posting on his fi rm's web site. He noted the PPH was limited since applicants had to wait until the application was al- lowed at the offi ce of fi rst fi ling. "Under this new procedure, an applicant can apply for the PPH in Canada if claims have been allowed in any one of the They are giving each other credit for what work the other offi ce has done so they are not reinventing the wheel each time an applicant comes along and applies to multiple countries. but there were limitations, said Lauren Hébert, a spokes- woman with Industry Canada. At the time, she noted, eligibil- ity was limited to the offi ce of fi rst fi ling. "As a result, more applications will meet the re- quirements for participation in these PPH agreements," she said of the recent changes. Zahl explained those United States, Japan, Spain or Finland, whether or not this country is the (offi ce of fi rst fi ling). Th e recognition is mu- tual, such that an applicant is entitled to request PPH in any of these four countries if claims have been allowed in Canada." Th e program isn't world- wide. But in the meantime, the United States has secured additional agreements under the same pilot project with Russia and Britain. Canada's agreement with the four countries ends on July 14, 2012, but they may extend it for up to one year or terminate it early depending on the volume of activity and other factors. But according to the United States Patent and Trademark Of- fi ce, the goal is to increase the number of applicants. "Th is new pilot is an important milestone in the evolution of the PPH net- work," David Kappos, under sec- retary of commerce for intellec- tual property and director of the U.S. patent and trademark offi ce, said in a release. "Th e stakehold- ers in the global IP community have embraced PPH and have asked for more opportunities to use the program. Th is pilot will be a more user-friendly version with greater fl exibility to elimi- nate duplicative work." 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