When a new and potentially patentable discovery is made, the owner embarks on a long and costly journey to protect and commercialize the discovery. There are many decisions to be made and many competing demands on management of time and financial resources. Without sufficient research and development there is no useful and commercially viable product to bring to market. Without strategic planning, marketing and communications the product will never come to the attention of potential users and buyers. Covering off these all of these considerations hopefully results in a useful product, that is manufactured cost effectively, distributed reliably, widely known and is in demand. A massive investment of time and money goes in to bringing a product to market and the more successful the product is the greater risk that others will try to copy the product or otherwise encroach on the market.
Obtaining a patent can give the owner the period of exclusivity needed to establish a firm hold and competitive advantage. With our increasingly global economy “obtaining a patent” is not simply a matter of filing an application in the inventor’s home country and getting down to manufacturing and selling product locally. It often becomes necessary to secure patent protection in multiple countries to adequately protect the investment of the inventor and any business entity that acquires an interest in the invention. In country where a patent is not secured, no business will have exclusive rights to manufacture or sell the invention.
Typically, a business will file for patents in countries where they expect to have a large customer base. It may also be advisable to obtain patent protection in countries where business competitors are active and have their main manufacturing facilities, and where offshore contract manufacturing is cheap and quick. As a result, owners often apply for patents in multiple countries, either as directly filed applications, or as national entries of Patent Cooperation Treaty (PCT) international applications.
The PCT System
The Patent Cooperation Treaty is an administrative system of international cooperation established to assist inventors, industry and patent agents throughout the world with filing patent applications in multiple countries in an orderly manner. Although some countries have not signed on to the PCT (e.g., Taiwan, Uruguay and Paraguay to name a few), most countries have done so. Currently, 148 member states have acceded to the PCT.
The PCT system allows applicants to file one international patent application designating all or select member states. During the international phase a search of prior art will be conducted and the results published in a report. The applicant will also have an opportunity to have the application substantively examined and to present arguments and/or amend the claims which define the scope of its invention. If the applicant opts for this “international preliminary examination”, a written opinion on patentability will be issued to the applicant.
The applicant is allowed up to 30 months from the claimed priority date or filing date of the PCT application (and in some countries slightly longer) within which to decide whether to enter the “national phase” and pursue patent protection in any or all of the member states. It is not until the national entries are due that the applicant will need prepare foreign translations and retain foreign patent agents to file “national phase” applications and represent the applicant before the patent offices of the selected member states.
In the end, the PCT system does not dispense with the need to file national and/or regional patent applications in all countries where a patent is sought. Rather, it:
(1) simplifies the initial logistical burden of filing applications for the same invention in multiple countries;
(2) allows the applicant to postpone the final selection of countries in which they will seek a patent and the significant costs of proceeding with filing applications in each selected country; and
(3) provides the applicant with a search of relevant prior art and a preliminary examination of the application to help the applicant assess the potential scope of any patent likely to be granted for the invention before incurring the cost to file in all selected countries.
Early PPH Initiatives
Even where a patent application is filed under the PCT System, the applicant will at some point face the prospect of having the application examined by several national patent offices, often in multiple languages and having to retain foreign patent agents to represent the applicant in each country. Historically, the process was complicated and time consuming. Although the same substantive inquiries were often being addressed in each country, the applications were being prosecuted on different timetables and taking into account the legal and procedural eccentricities of patent offices in different countries.
Early in the last decade some countries began initiatives to provide for accelerated patent examination procedures and the sharing of information between their patent offices. These initiatives are referred to as Patent Prosecution Highway (PPH) initiatives. The fundamental goal of the various PPH initiatives is to provide predictable and fast prosecution of patent applications and to mitigate the workloads of the national patent offices.
Initially PPH initiatives were bilateral agreements. The first PPH program was a bilateral pilot project launched in 2006 between the patent offices of Japan and the USA. Other bilateral agreements followed. In these bilateral agreements, the two contracting patent offices typically agreed that when an applicant receives notice from one of the patent offices allowing one or more claims in a pending application, the applicant could request fast tracked examination of the corresponding claim(s) of the application filed in the second patent office. This allowed applicants to reach final disposition of a patent application in the second country more quickly and efficiently than if it underwent standard examination.
Bilateral agreements between different countries often had complex and differing eligibility requirements and placed limits on where an applicant’s first priority application could be filed. But the overall experience was positive and has led to several multilateral PPH initiatives.
The Trilateral PCT-PPH Initiative
In 2010, the Trilateral PCT-PPH program was implemented. This initiative enabled applicants to fast track examination of their PCT national entry applications in the USA, Japan or the European Patent Office if they had received positive written opinions on the patentability of their inventions at the international PCT level. Other countries (including Canada) have since adopted PCT-PPH initiatives.
The Global PPH Initiative
A new Global Patent Prosecution Highway (GPPH) pilot project began in January of 2014. Although not truly ‘global’, the program had 13 original participants including Canada, the USA, Japan, Australia, Korea and several European countries and there is a mechanism for other countries to join this initiative.
Under the GPPH an applicant can request accelerated examination at any participating patent office based upon a favourable opinion issued by any other participating office or a PCT examiner.
The eligibility requirements are also standardized. An applicant can obtain expedited examination so long as the applications in each country have the same priority date, at least 1 claim has been found allowable by a participating patent office and all claims presented for examination in subsequent participating patent offices substantially correspond to the allowable claim or claims.
The IP5 PPH Initiative
The IP5 PPH is yet another pilot program that is running concurrently with the GPPH. The eligibility requirements of the IP5 PPH are essentially the same as the GPPH. The primary difference is in the identity of the participating offices: Japan, Korea, USA, European Patent Office, and China. These are the world’s five largest patent offices.
Numerous bilateral PPH initiatives now coexist alongside GPPH and IP5 PPH, and together they form a web of programs that can be selectively employed by applicants to streamline examination of patent applications in most commonly sought jurisdictions.
PPH = Faster Examination
A review of recent 2013-2014 performance statistics published by the Canadian Intellectual Property Office (CIPO) on its website illustrate that use of the PPH can substantially reduce wait times in the prosecution of a patent application.
After requesting examination of a patent application in Canada, the standard wait time to receive a first office action or allowance notice is approximately 20 months for applications based on chemical inventions, 24 months for mechanical inventions, and 36 months for electrical inventions. By comparison, 92 % of applicants who requested examination on the patent prosecution highway, waited only 3 months or less to receive a first examination report or allowance.
In addition to shortening examination time frames, use of a PPH initiatives will often lead to fewer and less complex objections from the patent offices. Although the applicant will still need to retain foreign patent agents to respond to these objections on its behalf, the responses are less complicated and the applicant’s costs are significantly reduced. Finally, when the patents are finally issued in each PPH jurisdiction for the same invention, the resulting patents are more likely to have claims of consistent scope and format. This can simplify the management and enforcement of the patent rights at an international level.
In sum, while the use of PPH initiatives may not be recommended in all situations for a variety of substantive and strategic reasons, applicants and their patent agents should consider employing such programs where available to protect their investment in a cost effective and efficient manner.
Disclaimer: The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.