The growth in the filing of patent applications throughout the world has placed considerable strain on a number of patent offices to process patent applications in a timely and efficient manner. This strain has increased the residence time between filing and grant of a patent and has impeded the ability of patent applicants throughout the world to enforce their rights. In most countries, a patent cannot be enforced until after grant.
In an attempt to streamline the process, reduce backlogs and increase the sharing of work product, a number of patent offices joined together in early 2014 to form the Global Patent Prosecution Highway (GPPH).
The patent offices currently participating in the Global patent prosecution highway are: Australia, Canada, Denmark, Hungary, Iceland, Israel, Finland, Japan, Korea, Nordic patent institute, Norway, Portugal, Russia, Spain, Sweden, United Kingdom and United States of America.
The GPPH is an agreement between patent offices which allows the patent applicant with an allowable claim in one country (either through examination of the national application or the PCT application), to request that the examination in another participating patent office be accelerated. This therefore provides an opportunity for Australian companies to accelerate prosecution of their applications overseas based on successful prosecution in Australia. In addition, it also provides a mechanism for foreign applicants to accelerate the prosecution of their Australian application based on successful prosecution in another GPPH country.
The first six months of 2014
Applications into Australia
In the period 1 January 2014 to 30 June 2014, the total number of requests to use the GPPH was a relatively small at 248. This included requests based on both PCT examination and examination of a national application overseas. Of these requests, an overwhelming majority were filed by applicants from the USA 184 (74%), with a smaller number coming from Japan 33 (13%) and Korea 18 (7.3%).
Applications out of Australia
In a similar vein, in the period 1 January 2014 to 30 June 2014, Australian applicants only used the GPPH program on 125 occasions, with most of these requests being filed in the USA (92), followed by Canada (18), Japan (8) and Korea (5), with a single request being filed in both Israel and the United Kingdom.
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Benefits of the GPPH
The relatively low usage of the GPPH is somewhat surprising given the clear advantages it provides and the way in which it expedites prosecution and facilitates grant.
Statistical data indicates that for applications into Australia, the use of the GPPH reduces the time taken to receive an office action from the current average of 11 months, to just under one month. This represents a significant increase in turnaround time at the Australian patent office and can aid applicants in achieving faster grant.
This increase in examination speed is mirrored for GPPH applications in other countries as well. The data published by the Japanese patent office on the portal for the Global patent prosecution highway provides the analysis for selected countries in Table 1. This data clearly illustrates that the GPPH greatly reduces prosecution time.
Improved grant rates
In addition to faster examination, the data also demonstrates that applications processed under the GPPH have significantly higher grant rates than cases prosecuted through the normal channels. Once again, using the countries above as representative examples, the comparative grant rates are outlined in Table 2. This data illustrates that the grant rates of GPPH cases are usually significantly higher than cases examined using normal channels.
Notwithstanding that there have not been a large number of cases either filed into or out of Australia using the GPPH, the preliminary data suggests that these will become more significant as more users understand and take advantage of the ability to file requests of this type. The filing of a request under the GPPH significantly increases the speed of prosecution in all jurisdictions. In addition, grant rates of cases handled under the GPPH are higher.