In December 2015, we reported on IP Australia’s announcement that they had signed a memorandum of understanding (MOU) with the European patent office (EPO) to increase bilateral cooperation between the two offices. One of the areas for proposed collaboration was the introduction of a bilateral patent prosecution highway (PPH) between the Australian patent office (APO) and the EPO.

As a result of the memorandum, on 1 July 2016, IP Australia and the EPO announced the commencement of a three year patent pilot program aimed at leveraging patent prosecution in one of the two jurisdictions to fast track patent prosecution in the other jurisdiction.

The IP Australia/EPO PPH covers applications filed through the Patent Cooperation Treaty (PCT), as well as applications filed under the Paris Convention. The program extends to examination carried out by either office in relation to:

  • examination carried out under the PCT, such as a Written Opinion or an International Preliminary Report on Patentability
  • examination after entry into the national phase.

Examination carried out either (i) during the international phase or (ii) after national phase entry, indicating that one or more claims are allowable or patentable, determines whether a patent applicant can request participation in the PPH in the other jurisdiction. Once filed, the request will expedite prosecution in the other jurisdiction and in many instances, will lead to rapid grant.

For most applicants, this will be most beneficial where the application receives a clear report during the international phase. The patent applicant will be able to request participation under the PPH using the International Preliminary Examination Report on patentability, as a PPH request can then be filed at national or regional phase entry. This will significantly increase the speed of prosecution.

In many cases, Australian applicants typically find that prosecution before the EPO is relatively slow as a result of the significant examination backlog. While programs are underway to address this backlog, the PPH provides Australian patent applicants with a useful tool to expedite prosecution of their European applications. Given the economic importance of grant of a European patent to Australian applicants, this can add significant value to their intellectual property portfolios by expediting grant in Europe in a cost effective manner.

The pilot program has been scheduled to run until 30 June 2019, at which time the results of the trial will be evaluated. Based on the experience of previous trials of this type, such as the trial PPH between IP Australia and the United States Patent and Trade Mark Office, we would anticipate that the program will be made permanent at the end of the trial.