Frequently Asked Questions about the Patent Prosecution Highway - USPTO

Most frequently asked questions

Requirements for filing a PPH request

Can a PPH request be made based on more than one corresponding patent application of the Office of First Filing (OFF)?

Yes, the PPH request can be based on more than one corresponding patent application of the OFF.

What does "sufficiently correspond" mean?

Claims shall be considered to sufficiently correspond where the claims on file are of the same or similar scope as the claims in the Office of First Filing (OFF), or the claims on file are narrower in scope than the claims in the OFF. In this regard, a claim on file which is narrower in scope occurs when an OFF claim is amended to be further limited by an additional technical feature that is supported in the specification (description and/or claims). A claim on file which introduces a new/different category of claims to those claims indicated as allowable in the OFF is not considered to sufficiently correspond. If the examiner determines that the claims on file do not sufficiently correspond to one or more of those claims indicated as allowable in the OFF, the applicant will be notified that the request for accelerated examination is not granted.

Can a PPH request be made if the CIPO application is not currently open for public inspection?

The CIPO application must be open for public inspection, and therefore the applicant must include a request that the application be opened to public inspection with the PPH request.

A request for examination has yet to be made; should this request be made with the PPH request?

Yes, the request for examination and the payment of the prescribed fee should be made with the request for accelerated examination under the PPH.

Requirements for filing a PPH request under the USPTO-CIPO Agreement

What is meant by "USPTO national application"?

A USPTO national application refers to either a:

  • provisional patent application;
  • non-provisional utility patent application;
  • continuation patent application;
  • continuation in part patent application; or
  • divisional patent application.

Can a PPH request be made if the CIPO application claims priority to a USPTO provisional patent application and if a USPTO national application claiming priority to the same USPTO provisional patent application is determined to be allowable by the USPTO?

Yes, because the USPTO application and the USPTO provisional patent application are both members of the same patent family.

Procedures for filing a PPH request

What is required for filing a completed PPH request?

The applicant is required to submit the following:

  • a completed PPH request form;
  • the relevant supporting documents;
  • a request for examination if such a request has yet to be made; and
  • an authorization to make the application open for public inspection if the application is currently not public.

The PPH request form must be the uppermost document to ensure that the request is correctly processed. All subsequent correspondence with the office must be clearly identified as relating to a PPH application to ensure that the correspondence is correctly processed.

Note: The PPH request must be accompanied by, or preceded by a request for examination and/or an authorization to make the application open for public inspection. If the PPH request is sent as a separate document, processing may be delayed.

Is a completed claim correspondence table required even if the claims amended with the PPH request are identical to the allowed/granted Office of First Filing (OFF) claims?

Yes. If the claim correspondence table is not submitted, the PPH request will not be granted.

Procedures of examining a PPH request

What is the timeline for receiving a first office action (allowance or examiner's report) from CIPO in response to a PPH request?

The turnaround time goal to process and issue a first action response is set at 90 calendar days from the date the PPH request is made. If the examiner's first action results in an allowance, the applicant may receive the Notice of Allowance after the set 90 calendar days from the date the PPH request is made because of the additional processing that is required.

Will CIPO issue a courtesy letter indicating that the PPH request has been received and granted?

CIPO will not issue a courtesy letter indicating that the PPH request has been received by the office. The first correspondence from the CIPO will be in the form of a first action (allowance or examiner's report) or an office letter indicating why the PPH request is not granted.

When is a request for accelerated examination under the PPH not granted?

A request for accelerated examination under the PPH will not be granted if the application does not comply with the requirements for requesting accelerated examination under the PPH ( i.e., the claims do not sufficiently correspond or the application is incomplete).

Can the applicant amend the claims in response to an office letter written by the examiner indicating that the claims do not sufficiently correspond to those allowed by the Office of First Filing (OFF)?

The applicant can amend the claims, but not as an official response under the PPH. To re-enter the PPH, the applicant must reapply altogether.

What if the claims allowed by the Office of First Filing (OFF) contain subject matter that is non-statutory in Canada?

An application containing claims to non-statutory subject matter may still receive accelerated examination under the PPH if the claims on file sufficiently correspond with those allowed by the OFF. The presence of claims to non-statutory subject matter will not be a reason to remove an application from the PPH.

While some claims are clearly and obviously directed to non-statutory subject matter, often claims are in a grey area and an examiner will make a determination as to whether the claims contain any statutory or non-statutory subject matter during examination. The examiner's report will indicate that the claims contain non-statutory subject matter according to the Canadian Patent Act, Patent Rules and the Manual of Patent Office Practice (MOPOP). Applicants should amend the claims to conform with the Patent Act, Patent Rules and MOPOP accordingly.

An examiner can remove an application from the PPH (accelerated examination) if the applicant is not willing to amend claims to remove the non-statutory subject matter (since the goal of the PPH process is to expedite prosecution).

Are amendments to the claims entered regardless of whether the PPH request for accelerated examination is granted?

Yes, all amendments to the claims made with the request for accelerated examination under the PPH agreement will be entered, regardless of whether the request is granted or not.

If a PPH application is abandoned in accordance with subsection 73(1) of the Patent Act, will it receive accelerated examination under the PPH once the application is reinstated?

Yes, if a PPH application has been abandoned in accordance with subsection 73(1) of the Patent Act, the application will still be advanced for examination out of routine order, once it is reinstated.

Recommendation to participants

A report on the program indicated that many PPH requests would have been in condition for allowance were it not for commonly known description informalities that could have been corrected in a voluntary amendment as part of the PPH request. These obvious informalities include defects such as a statement that incorporates by reference another document (section 81(1) of the Patent Rules), and reference to documents that are not available to the public (subsection 81(2) of the Patent Rules).

When requesting accelerated examination under the PPH, applicants/agents should focus on the application as a whole, rather than solely on the claims.

It is recommended that applicants/agents review the complete application and amend the application to correct known informalities that result from the differences between CIPO and Office of first filing (OFF) patent application requirements.

Note: Participants of the PPH will receive a questionnaire, which they are encouraged to complete in order to provide CIPO with a more comprehensive client perspective.

Further Information

Any inquiries concerning this notice may be directed to the PPH Coordinator by email: pph@ic.gc.ca or by calling the CIPO Client Service Center at 819-934-0544 or toll-free at 1-866-997-1936.