Global Patent Prosecution Highway: a strategy for securing early patent grant

Global Patent Prosecution Highway: a strategy for securing early patent grant

Global Patent Prosecution Highway: a strategy for securing early patent grant

An agreement signed by Australia and 12 other countries will provide applicants with an opportunity to request accelerated examination and secure early patent grant in the participating states. 

Expansion of the Patent Prosecution Highway (PPH) pilot program

Since 2008, the Australian Patent Office and the United States Patent and Trademark Office have participated in a bilateral pilot program that provides a mechanism for accelerating patent examination. Under the Patent Prosecution Highway (PPH) pilot program, an applicant receiving a ruling from either one of the participating national patent offices that at least one claim is allowable, could request that the other participating office fast track the examination of the corresponding application.

The PPH pilot was subsequently expanded to include applications filed under the Patent Cooperation Treaty (PCT), where an applicant could request accelerated examination of a PCT-derived national application on the basis of the international search or examination report, where at least one claim was considered allowable.

Features of new Global Patent Prosecution Highway (GPPH) pilot program 

From 6th January 2014, the existing PPH pilot program will be replaced by the Global Patent Prosecution Highway (GPPH) pilot program.  The participating countries are:

  • Australia
  • Canada
  • Denmark
  • Finland
  • Iceland
  • Japan
  • Republic of Korea
  • Norway
  • Portugal
  • Russia
  • Spain
  • United Kingdom
  • United States of America

Under the GPPH pilot program, an applicant receiving a ruling from any one of the participating patent offices that at least one claim is allowable, can request that one or more of the other participating patent offices fast track examination of a corresponding application in another GPPH country. This includes rulings issued in a participating country’s capacity as an international searching and examination authority under the PCT.

 

 Use of GPPH program to gain rapid patent grant outside Australia

For those wishing to take advantage of the GPPH pilot program in GPPH countries other than Australia, consideration should be given to the early filing of a request for expedited examination of the corresponding Australian application, along with an amendment (if necessary) to ensure the Australian application includes at least one claim of the scope desired to be pursued in other GPPH jurisdictions.  In requesting expedited examination to initiate the process in Australia it is currently only necessary to provide a general statement justifying the need for early examination. Stating that there are “commercial reasons” for doing so will usually suffice.

Under current practice, a first examination report should issue within 1 to 3 months of the date of the request.  If the examination report indicates that at least one claim is allowable, then this can form the basis of a request for accelerated GPPH examination of a corresponding application in any of the other GPPH states.

 

Use of GPPH program to gain rapid patent grant in Australia

For those wishing to take advantage of the GPPH pilot program in Australia based upon prosecution in another GPPH country the following criteria must be met:

(1) the Australian application must be associated (such as by being derived from a common PCT application or common priority claim) to the application in another GPPH country that includes an allowable claim or claims;

(2) examination of the Australian application must have been requested, but a first examination report must not have issued; and

(3) the claims of the Australian application  must be similar, the same or narrower in scope to at least one claim found to be allowable in the other GPPH country. 

Advantages of the GPPH system

The GPPH pilot program should be considered as part of a global filing strategy, particularly where commercial imperatives exist for securing early patent grant.  It also provides applicants with an opportunity to streamline examination and thereby minimize the costs otherwise associated with protracted patent prosecution.  An Australian application can form an important part of this global filing strategy by providing an early examination report that will form the basis of accelerated examination under the GPPH.

 

Please contact Mark Roberts or Alex Tzanidis if you would like any further information about the GPPH pilot program.

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