The New Year will bring us two new options for accelerating progress of patent applications in a variety of countries.
The five largest patent offices, known as the IP5, are launching a new IP5 Patent Prosecution Highway (IP5 PPH) in January 2014. The IP5 offices are the European Patent Office, the Japanese Patent Office, the Korean Intellectual Property Office, the State Intellectual Property Office of the People’s Republic of China and the United States Patent and Trademark Office.
The programme will enable an applicant to request accelerated examination of an application in one of the IP5 offices based on claims found to be patentable by one of the other IP5 offices or on the basis of a PCT opinion.
A new pilot Global Patent Prosecution Highway (GPPH) has also been announced, which is also due to commence in January 2014 and which covers 13 patent offices. Under the GPPH pilot scheme accelerated examination may be requested at any one of the participating patent offices based on the earlier finding of a patentable claim or claims at any one of the participating patent offices.
In some cases the GPPH or the IP5 PPH may be a useful addition to the options available to an applicant, especially when the scope of protection offered by the office of earlier examination is broad. It may also be useful where the allowed claims cover an infringing product and there is a desire to swiftly obtain a granted patent that can be enforced against that product. If it has been necessary to significantly reduce the scope of protection in the earlier examination, however, or where the restrictions that were made are perceived to be specific to that country’s requirements, it might not be desirable to correspondingly restrict the scope of protection in other countries.
Whilst the IP5 PPH and the GPPH schemes may not be suitable for every applicant they will certainly add further options for acceleration of patent applications and will hopefully reduce the complexity and cost of obtaining patent protection in the participating countries.
Full details of the IP5 PPH have not been announced yet, but it is expected that it will launch in January 2014. However, it appears that the new IP5 PPH will allow the applicant to use the allowed claims of any earlier examined application that is before a participating office, which may well increase the usefulness of the agreement. Under earlier PPH agreements, any request for accelerated examination had to be filed based on claims considered to be allowable by the office of first filing, which restricted the usefulness of the system if the office used by the applicant for its first filing was slow in examining the application.
Previous PPH agreements have required the offices to accelerate examination of an application when PPH is requested, but each office has remained able to examine the claims and so acceptance of the claims as granted in one of the other participating offices is not guaranteed. The EPO offers the possibility of excellent acceleration of the examination process using the PACE scheme, and the formal requirements for PACE are less onerous than applying for acceleration under previous PPH schemes. Therefore it will be interesting to see how useful the IP5 PPH scheme will be in Europe and in the other participating offices; this will in part depend on the degree of further examination carried out by the national offices after acceleration has been requested under the IP5 PPH.
The launch of the pilot Global Patent Prosecution Highway (GPPH) was announced by the Japanese Patent Office; this scheme will run alongside the IP5 PPH.
Thirteen offices will participate in the GPPH pilot scheme, namely:
- IP Australia;
- Canadian Intellectual Property Office;
- Danish Patent and Trademark Office;
- National Board of Patents and Registration of Finland;
- Japanese 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;
- United Kingdom Intellectual Property Office;
- United States Patent and Trademark Office.
Under the GPPH pilot scheme a request for accelerated processing may be made at any of the participating offices based on a “work product”, i.e. substantively examined claims, from any of the other offices or from a PCT examination. The work product must have found at least one claim to be allowable and the applicant must file a request for PPH and a copy of the work product together with a copy of the claims that have been found to be allowable. It may also be necessary to demonstrate that the claims presented for PPH acceleration correspond to the claims considered to be allowable in the work product.
Although full details of the process have not been issued yet, it appears that national offices may charge a fee for use of the GPPH.
It is also worth noting that the European Patent Office is not a member of the GPPH pilot scheme.