Law in Quebec

Launched at the beginning of the year, the two-year pilot program will replace existing bilateral agreements with a single, harmonized multilateral agreement that could help reduce the backlogs of patent applications faced by intellectual property offices around the world. Under the new Global Patent Prosecution Highway (GPPH), patent applicants will be able to request their patent application to be fast-tracked, provided that its claims have been previously deemed acceptable by any of the other participating patent offices.

“I can see this becoming a nexus under which patent offices collaborate more and more in the future, and that can only be a good thing for patent applicants,” said Sean Alexander, a principal and patent agent with Gowling Lafleur Henderson LLP in Vancouver. “It will somewhat reduce costs across the board and perhaps speed up patent grants.”

A patent is a right, granted by government, to exclude others from making, using, or selling an invention. In order to obtain a patent, an invention must show novelty, utility, and ingenuity. Patent applications, which consists of an abstract, a specification, and often drawings, are analysed by examiners with extensive technical and legal training. The interaction between applicants or their patent agents and a patent office over the fate of a patent is referred to as patent prosecution.

“Typically an examiner will perform a search of different databases throughout the world and will find all references that are as close as to the invention as the examiner can find,” explained Jeff Leuschner, a patent agent with Smart & Biggar/ Fetherstonhaugh in Ottawa. “The examiner will then form an opinion and write a preliminary report as to whether the invention meets the criteria. What then happens is a bit of back-and-forth between the patent applicant and the examiner or what we call patent prosecution.”

It can be a long process, more so now than ever. Patents, once viewed as a stodgy bundle of legal rights, are now recognized as the most important asset of many of the world’s largest companies, and the foundation for market dominance. High-tech behemoths, following in the footsteps of the pharmaceutical industry, are now using intellectual property as a weapon to thwart competitors, spending billions of dollars to amass patents as well as rushing to patent its own inventions. Google Inc., who bought Motorola Mobility and its thousands of patents for a staggering US$12.5-billion two years ago, was awarded nearly 2,000 patents in the U.S. last year, almost double the number of all previous years combined. Indeed, in 2003, the search giant was awarded only four patents.

The patent race, aside from threatening to overwhelm smaller technology companies, has also lead to backlogs that are overwhelming intellectual property offices. The Canadian Intellectual Property Office (CIPO) currently has a two-to-three year backlog of applications awaiting examination. Though the U.S. Patent and Trademark Office (USPTO) issued a record number of patents last year, it faces an even more impressive backlog, with more than 600,000 patent applications waiting for first examination.

Bilateral patent prosecution highway (PPH) agreements forged between national patent offices, such as the two-year pilot program Canada and China signed last year, have helped to reduce the backlogs. Under PPH agreements, when one patent office has signalled that a patent is allowable, the other patent office will accelerate its consideration of the corresponding application so long as the claims are the same. All told, Canada has bilateral agreements with U.S., and pilot agreements with Denmark, Finland, Germany, Israel, Japan, Korea, Spain and the United Kingdom.

Fast-tracking examination under PPH programs have been a “phenomenal success,” and has positioned Canada as a highly cost-effective jurisdiction in which to obtain patent protection with speed and efficacy, says Leuschner. On average PPH applications have far shorter wait times for examination and receive fewer so-called “office actions,” that is, an examiner’s objections to the patent application.

Now there are high hopes that the GPPH pilot program will speed up the process even more, particularly since it expands the number of countries that can be used as an office of earlier examination for the purposes of fast-tracking examination in Canada.

“The GPPH program works in the same as these bilateral agreements but now you have a single agreement, with a single set of criteria, with a relatively large number of patent offices that are participating,” said Leuschner. “With these bilateral agreements between all of these different patent offices, although in substance they are kind of similar, they may have particulars that are different with each one as to what is required when making a request for an accelerated examination.”

The list of intellectual property offices that have joined the GPPH pilot program has already grown from 12 to 17 in the short time since it was announced late last year, and more countries are expected to enrol in the future. While three of the five largest intellectual property offices are participating in the GPPH pilot program, including the USPTO, the Japan Patent Office and the Korean Intellectual Property Office, two standouts remain. The European Patent Office (EPO) and the State Intellectual Property Office of the People’s Republic of China (SIPO) are currently not part of the GPPH program.

“The absence of the Europeans certainly detracts from the value of the GPPH program,” said Alexander. “But it is not unusual for the EPO to be a little gun shy about these things because they do consider themselves to be and in fact they are the premier office in terms of examination. Everyone trusts the EPO’s examination but the EPO doesn’t necessarily trust everybody else.”

While unfortunate, their absence is not critical, says Serge Lapointe, a patent agent with Fasken Martineau DuMoulin LLP in Montreal. He points out that there are “other ways to obtain similar results,” be it through Canada’s bilateral PPH pilot agreement with China or the EPO’s Programme for Accelerated Prosecution of European patent, which is very simple to use and free of charge.

Lapointe, who views the GPPH pilot program favourably, wonders whether the Canadian Intellectual Property Office will now devote much of its resources to deal with accelerated examinations to the detriment of normal applications.

“Will examiners in Canada, who now face a certain backlog, will they devote much of their efforts to the GPPH program?” wondered Lapointe. “What will happen to the files that are not the subject of accelerated examinations? Examiners may be facing an even greater workload.”