Taking advantage of the Global Patent Prosecution Highway pilot

By Michael Evans

By Michael Evans

This article presents a brief summary of the advantages and requirements of the new in 2014 Global Patent Prosecution Highway (GPPH) pilot program.

Contact Ernest Graf for more information

Contact Ernest Graf for more information

For a number of years Australia has trialled a bilateral Patent Prosecution Highway (PPH) program with the United States Patent and Trademark Office (USPTO). From January this year the trial has been extended to a number of other patent offices around the world in the form of the GPPH pilot program. So far the following patent offices, in addition to IP Australia, are participating:

  • Canadian Intellectual Property Office
  • Danish Patent and Trademark Office
  • Hungarian Intellectual Property Office
  • Icelandic Intellectual Property Office
  • Israel Patent Office
  • National Board of Patents and Registration of Finland
  • Japan Patent Office
  • Korean Intellectual Property Office
  • Nordic Patent Institute
  • Norwegian Industrial Property Office
  • Portuguese Institute of Industrial Property
  • Russian Federal Service for Intellectual Property
  • Spanish Patent and Trademark Office
  • Swedish Patent and Registration Office
  • United Kingdom Intellectual Property Office
  • United States Patent and Trademark Office

Of these the Canadian, Finnish, Israeli, Japanese, Korean, Nordic, Russian, Spanish, Swedish and United States patent offices are also designated International Authorities (IA) under the Patent Co-operation Treaty (PCT).

Under the GPPH examination of a patent application at a participating office can be accelerated by utilising a ruling on a corresponding application from one of the other participating patent offices stating that at least one claim of that corresponding application is allowable.

Requirements

In Australia, the GPPH procedure is similar to the prior procedure under the Patent Prosecution Highway between Australia and the United States.

To participate in the GPPH, the Australian application must be a complete application for a standard patent and must be associated with either a foreign application examined by any of the participating offices listed above, or a PCT application examined by one of the above International Authorities. As mentioned, at least one of the claims must have been deemed allowable by the examining patent office. However, if a first examination report has already been issued by IP Australia the Australian application cannot be accelerated under the GPPH.

Examples of relationships between the Australian application and the foreign application or PCT application satisfying the GPPH requirements are:

  1. The Australian application claims priority to the foreign application;
  2. Both applications are based on the same PCT application;
  3. Both applications claim priority to a common priority document;
  4. The foreign application claims priority to the Australian application;
  5. The other application is a PCT application designating a participating patent office and the Australian application is a national phase of that PCT application;
  6. The other application is a PCT application designating a participating patent office as the International Preliminary Examining Authority (IPEA), and the Australian application claims priority from that PCT application; or
  7. The other application is a PCT application designating a participating patent office as the International Preliminary Examining Authority (IPEA) and the Australian application is a priority document for that PCT application.

In addition, the Australian application can be a divisional application of an Australian application satisfying one of the above requirements.

Procedure

The process in Australia is straight forward and requires minimal documentation all of which can be provided in a letter accompanying the request for examination. The letter needs to include:

  1. A statement that the Australian application is to be examined under the GPPH;
  2. Details of the association between the Australian Application and the foreign application or PCT application;
  3. An indication of the relationship between the Australian claims and the previously examined and allowable claim(s). This may be in the form of a table or a general statement. If necessary, amendments can be made to the Australian claims in order to correlate with the allowable claims; and
  4. Specific details of the previous examination(s) performed by the overseas patent office, so that IP Australia can access the documentation via the overseas patent office’s Dossier Access System (DAS), such as an application number and date(s) of examination or the actual examination reports may be provided.

If earlier examination reports are in a language other than English, IP Australia accepts machine translations provided by the overseas patent office’s DAS, for example the PCT’s PatentScope. If the machine translation is considered inadequate the Applicant will be requested to provide a verified translation.

Conclusion

The GPPH allows Applicants to fast track their Australian applications if examination has already been performed by a foreign patent office and allowable claims have been identified. Experience has shown that the turn around time is extremely quick with examination reports issued by IP Australia, on occasion, in just one week.