Patent Prosecution Highway: a strategy for securing early patent grant in the US
On 15 July 2011 the US Patent and Trademark Office (USPTO) and the Australian Patent Office (IP Australia) expanded their bilateral Patent Prosecution Highway (PPH) program by relaxing the earlier priority requirements.
Under the expanded PPH program applicants are now provided with an opportunity to secure early patent protection in the US where a co-pending Australian application has been examined and at least one claim found allowable. By requesting expedited examination of their Australian application, which can be done from the time of filing up until the deadline for requesting examination, a first report can issue within 1 to 3 months. If the report indicates that at least one claim is allowable, early PPH examination of the US counterpart can be requested. When requesting early PPH examination, applicants must ensure that the claims are similar, the same or narrower in scope than at least one claim found to be allowable on the corresponding application.
This opportunity to accelerate the prosecution of a US application to grant can represent a strategic advantage for many Applicants, particularly where there are commercial imperatives for securing an early grant. Accordingly, applicants not currently filing in Australia should reconsider their filing strategies to take advantage of this opportunity.
The PPH also allows an Applicant to request accelerated examination in the other country based on a written opinion or an examination report issued by IP Australia or the USPTO in their capacity as an International Searching Authority or International Preliminary Examining Authority under the PCT.
The expanded PPH program between the USPTO and IP Australia will run until 14 July 2012, when it will be reviewed for further expansion.