Law Times

Law Times • February 27, 2012 NEWS IP practitioners skeptical of patent highway Lack of harmonization leaves potholes in current agreements with Canada BY JULIUS MELNITZER For Law Times Prosecution Highway pilot project with the United Kingdom Intellectual Property Office with some skepticism. Patent Prosecution Highways are bilateral I agreements between patent offices whereby when one jurisdiction has indicated that a patent is allowable, the other will accelerate its consideration of the corresponding applica- tion as long as the claims are the same. "The rationale behind the PPH is to avoid the duplication of effort by the patent offices and provide a reduced pendency for appli- cations," says John Orange, a Toronto-based patent agent who practises with Blake Cassels & Graydon LLP's intellectual property group. "In Canada, the advantage of PPH processing is that such applications are given priority for examination." Apart from Britain, Canada has agreements with the United States, Denmark, Germany, Japan , Korea, Finland, and Spain. Although the procedure has proven popular, particularly with large filers that can achieve substantial savings, it remains a thoroughfare with a few potholes to fill. "From a practitioner's point of view, PPH processing is not the be-all and end-all," says Orange. "The main difficulty is that patent laws and procedures have not been completely harmonized and that can lead to problems." One difficulty stems from the fact that patent applications commonly include different categories of claims such as appara- tus, method, and product. In Canada, applicants can usually file such claims in a single application as long as they have a common inventive feature. The United States, however, regularly requires the assignment of the invention to one category of claims. "For example, in the U.S., the allowed claims may be directed StayingAheadLawTimesSpecs.eps 1 2/15/2012 1:50:05 PM 'In Canada, the advantage of PPH processing is that such applications are given priority for examination,' says John Orange. ntellectual greeting the property practitioners are Canadian Intellectual Property Office's Jan. 31 announcement that it had entered into a two-year Patent to an apparatus and the method or product claims filed in a continuation or divisional application," says Orange. "Similar issues may arise in the prosecution of chemical com- pound patents." The upshot is that Canadian claims couldn't access the PPH unless they had similar restric- tions. "The claims allowed in the first office need to be sufficiently similar to the ones you're putting forward in the second office or you're going to get kicked out of the PPH," says Kevin O'Neill, an Ottawa-based patent agent who practises at Gowling Lafleur Henderson LLP. In most countries, claims cancelled to bring an application into PPH conformity could be prosecuted in a subsequent divisional applica- tion. But Canada espouses the double-patent- ing doctrine that prevents the issuance of two patents covering the same invention. "A divisional application in Canada is vul- nerable to a double-patenting attack unless the Canadian examiner has expressly indicated that the claims on file are directed to more than one invention," says Orange. But in the case of a PPH application, applicants must amend their applications to conform to the allowed claims before exami- nation. That means there will be no opportunity for an examiner to indicate that more than one invention is involved. "One possibility is to wait for the divisional U.S. application to be allowed and request a PPH based on both allowed sets of claims," says Orange. "But usually that creates delay while the sec- ond application is being examined." Where dispatch is necessary, an alternative approach is to file for expedited examination. That, however, requires a $500 fee. "The claims can be amended to conform with the allowed claims, but the other sets of claims can be retained or added," Orange notes. "The examiner would then consider unity, and if there is an objection, the divisional application could be filed with- out attracting risk." LT PAGE 3 The law is growing more complex by the day – and in today's knowledge economy, keeping your edge is essential. C M Y CM MY CY CMY K From in-person conferences to online webinars, we have the programs you need, delivered exactly when and how you need them. CBA's PD resource website will enable you to search upcoming programs, manage your mandatory credits and communicate with PD course colleagues and leaders. Let the CBA accelerate your professional devel- opment and help you stay ahead of the curve by building the expertise and skills you need to excel. The Canadian Bar Association (CBA) is committed to offering you the best Professional Development (PD) programs in the country - including our new, interactive and online CBA Skilled Lawyer Series II. Stay ahead of the curve by visiting www.cba.org/pd. INFLUENCE. LEADERSHIP. PROTECTION. www.lawtimesnews.com

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