The new Global Patent Prosecution Highway improves on the individual PPH agreements of the past — replacing numerous bilateral agreements with a single, harmonized multilateral agreement.
Sean Alexander is a patent agent in the Vancouver office of Gowling Lafleur Henderson LLP. He notes, for those unfamiliar, that patent “prosecution” has nothing to do with criminal prosecution. “When you file a patent application and then argue with the patent office about whether it’s deserving of being granted, that’s called patent prosecution.”
The process typically lasts two to three years — a lengthy wait time that can be compounded if the applicant seeks prosecution in multiple jurisdictions. “Right now the process is very slow,” says Alexander. “You file your patent application. You request examination of the application, and then you can wait two, three years before you actually get an examination report from the patent office.”
What PPH agreements allow, then, is for an applicant to use patent approval in one jurisdiction in order to persuade a patent office in another jurisdiction with similar standards. “Canada, for example, will be persuaded by the U.S. finding that a patent claim is novel and inventive,” says Alexander.
The effect is a greatly reduced prosecution time: “Instead of waiting a couple of years for the first action, you probably wait three to six months.”
The Global PPH program takes that concept one step further — allowing the applicant to persuade 15 other jurisdictions in a single application. (The Canadian Intellectual Property Office publishes a list of all PPH partners on its web site.)
“It’s going to be a benefit for a lot of companies applying for patents,” says Alexander, “because now instead of dealing with individual requirements, you’re just dealing with one single set of requirements.”