Brand New Patent Prosecution Highway pilot between the Canadian Patent Office (CIPO) and the Israel Patent Office (ILPO)

The Canadian Patent Office has announced a new Patent Prosecution Highway (PPH) pilot project between the Canadian Intellectual Property Office (CIPO) and the Israel Patent Office (ILPO) which will commence on November 1, 2012, for a period of two years ending on October 31, 2014. This agreement is similar CIPO's other PPH agreements. The PPH allows a patent applicant to request the CIPO for accelerated examination of a patent application that meets certain criteria to be advanced out of turn for examination if there is at least one corresponding application in a foreign patent office that Canada has a PPH program with that has one or more claims that were found to be allowable.

See the link below for further information:
http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03564.html

In addition, see our blog dated October 5, 2012 regarding other PPH agreements:
http://www.canadaipblog.com/2012/10/three-patent-prosecution-highway-pilot.html

By Kay Palmer

Expedited Examination of Patent Applications Relating to Green Technology

Under Section 28 of the Patent Rules applications relating to green technologies may be eligible for expedited examination. Applicants wishing to take advantage of this initiative and expedite examination of their applications describing green technology must submit a written request for expedited examination to the CIPO along with a declaration “indicating that the application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or to conserve the natural environment and resources.” 

Additional information relating to expedited examination of patent applications relating to green technology can be found at: 

http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr02991.html 

There are currently 70 applications expedited under this initiative. A listing of applications can be found at:

http://brevets-patents.ic.gc.ca/opic-cipo/cpd/eng/green_technologies.html 

Applications recently listed include:

By Claire Palmer

Filing of Prior Art in Canada and Other Jurisdictions as a Means of Getting Prior Art in Front of the U.S. Examiners

Third Parties wishing to impact the scope of a competitor’s pending application at the USPTO have the option of submitting relevant prior art to the USPTO. The opportunity for a Third Party to submit printed documents to the USPTO is limited. 

New Rules took effect on September 16, 2012 which expanded the window of opportunity for a third party to submit printed documents. Third-Party Submissions must be made (1) before the later of (i) 6 months after the date the application is first published by the Office, or (ii) the date of a first Office action on the merits rejecting any claim, and (2) before the date a notice of allowance is given or mailed. 

Although the new Rules provide an improved opportunity for third parties to submit prior art, it may be desirable for a Third Party to take steps that would result in the presentation of new prior art to the USPTO examiner after the above noted dates. The U.S. duty of disclosure requirements together with mechanisms of filing prior art in other jurisdictions provide a possible avenue via which new prior art could be brought to the U.S. Examiner’s attention. In particular, a U.S. Applicant would be obligated to provide to the USPTO prior art filed in relation to a corresponding application in a jurisdiction other than the U.S. 

Jurisdictions including Canada provide for a third party to submit prior art in relation to a pending application. Under section 34.1 of the Canadian Patent Act, “[a]ny person may file with the Commissioner prior art, consisting of patents, applications for patents open to public inspection and printed publications,that the person believes has a bearing on the patentability of any claim in an application for a patent.” The Canadian Patent Act requires “a person who files prior art with the Commissioner under subsection (1) shall explain the pertinency of the prior art.” Other jurisdictions which allow for the submission of third party observations include the UK and Europe. 

Accordingly, the filing of prior art in jurisdictions such as Canada can provide a cost effective means of drawing prior art to the attention of the U.S. Examiner.

By Claire Palmer

Update - EPO Enlarged Board Referrals Regarding Patent Defence

MBM recently received an interesting update from Harrison Goddard Foote detailing lessons from recent EPO Enlarged Board Referrals regarding patent defence. In this update HGF provide guidance to patentees on claiming strategy in opposition defence, noting that: 

Patentees facing opposition are well advised to think ahead and at least by the stage of reply to the Summons to Oral Proceedings before the OD endeavour to have on file any claim requests that could be required to save the Patent. Auxiliary claim requests should be structured on the basis that added subject matter, novelty and inventive step can be expected to be considered and decided upon at oral proceedings in that order. Where an OD sees that a simple new request will overcome an issue, particularly where this will permit full discussion of all objections at first instance and/or if the issue is unexpected, then they may well be helpful in offering the Patentee opportunity for further such amendment on the day. Such offer should only be overlooked where it is clear that there can be no commercial worth in the possible amendment. On occasions it may be far better to secure maintenance of a European patent with narrower claims before an OD and appeal rather than see complete revocation. 

The full update from HGF can be found at http://www.hgf.com/uploads/Lesson%20from%20recent%20EPO%20enlarged.pdf.

By Claire Palmer

Three Patent Prosecution Highway Pilot Project Agreements Extended

Canada’s pilot Patent Prosecution Highway (PPH) agreements with Finland, Germany and Spain were set to expire on September 30, 2012. The agreements have now been extended for an additional two years, and will expire on September 30, 2014. Canada entered into pilot PPH agreements with Finland, Germany and Spain on October 1, 2010. 

The PPH project allows a patent applicant to request the Canadian Intellectual Property Office (CIPO) for accelerated examination of the patent. To qualify for prioritized examination under the PPH the patent applicant must have an application corresponding to the Canadian application before the Intellectual Property Office (IPO) of a partner Country. Additionally, the partner Country’s IPO must have determined at least one claim of the corresponding application to be allowable. The examination of the Canadian application will still occur in accordance with the Canadian Patent Act, R.S.C. 1985, c. P-4 and the Patent Rules SOR/96-423. 

Canada currently has one PPH agreement with the United States, and four additional pilot PPH agreements with Denmark, Japan, Korea, and the United Kingdom. Accelerated examination under the PPH may also be sought under the Patent Cooperation Treaty (PCT) where CIPO is the designated International Searching Authority and/or International Preliminary Examining Authority.

By Jahangir Valiani