Since 14th April 2008, IP Australia and the United States Patent and Trademark Office (USPTO) have participated in a Patent Prosecution Highway (PPH) pilot for accelerated examination. However, from 6th January 2014, IP Australia will join the Global Patent Prosecution Highway (GPPH) pilot that will effectively replace the existing PPH pilot. The GPPH pilot will provide a common framework for multiple jurisdictions whereby an applicant can request accelerated examination of its application in any of the participating offices on the basis that corresponding claims are allowed in another participating office.
Currently, the following twelve foreign offices are participating in the GPPH pilot:
- Canadian Intellectual Property Office (CIPO) - Canada;
- Danish Patent and Trademark Office (DKPTO) - Denmark;
- National Board of Patents and Registration of Finland (NBPR) - Finland;
- Japan Patent Office (JPO) - Japan;
- Korean Intellectual Property Office (KIPO) - Korea;
- Nordic Patent Institute (NPI) – Nordic (Denmark, Iceland and Norway);
- Norwegian Industrial Property Office (NIPO) - Norway;
- Portuguese Institute of Industrial Property (INPI) - Portugal;
- Russian Federal Service of Intellectual Property (ROSPATENT) - Russia;
- Spanish Patent and Trademark Office (SPTO) - Spain;
- United Kingdom Intellectual Property Office (IPO) - UK; and
- United States Patent and Trademark Office (USPTO) - USA.
To be eligible to request accelerated examination under the GPPH pilot in any of the participating offices, at least the following criteria must be met:
- Applications before the Office of Earlier Examination (OEE) and the Office of Later Examination (OLE) have the same earliest date (i.e., priority or filing date);
- At least one claim is found and explicitly stated to be allowable by the OEE;
- All claims presented for examination under the GPPH pilot must sufficiently correspond to one or more of the claims found allowable by the OEE;
- The OLE has not begun substantive examination; and
- A request for examination must have been filed at the OLE, either at the time of the GPPH request or previously.
There is no doubt that the GPPH pilot will benefit applicants with acceptable Australian claims by providing an enhanced ability to fast track the patent process in multiple foreign jurisdictions. However, compared to alternative methods, there appears to be limited benefit for applicants with allowable claims in a foreign jurisdiction in seeking to do the same in Australia. In particular, Australian patent law already provides a relatively simple alternative in which an applicant can request expedited examination. The only requirement for requesting expedited examination is that the Commissioner of Patents must be satisfied that expedited examination is in the public interest, or that there are special circumstances that make it desirable. In practice, providing a simple reason as to why examination should be expedited (e.g. commercial reasons) will generally suffice.
Based on our experience with the existing PPH pilot, we expect that requesting expedited examination will be the more cost effective option as fewer administrative procedures are involved. We also understand that IP Australia will treat a request for expedited examination in the exact same manner as a request for examination under the GPPH pilot, and thus both should have the same result (i.e., the issuance of an Examiner’s First Report within 1 to 2 months of the request being filed). Furthermore, for applicants with allowable claims in the US or at the EPO, it is already standard practice for the Australian Examiner to consider the outcome of any corresponding US or EP application during examination regardless of which method of acceleration is taken.