How can examination be expedited?

There are several ways of expediting examination in Australia including:

  • General Expedited Examination
  • The Global Patent Prosecution Highway (GPPH) pilot programme
  • The Green Technology Fast Track Programme for inventions relating to environmentally-beneficial inventions

The GPPH pilot programme commenced in January 2014.  An end date for the pilot has not been announced.

When will General Expedited Examination be granted?

The Commissioner of Patents must be reasonably satisfied that “it is in the public interest, or there are special circumstances that make it desirable” to expedite examination.  IP Australia readily accepts requests made under this provision, including requests based on “commercial reasons”, for example if you are seeking to enforce patent rights or if an investor requires a granted patent before investing in your invention.  

What are the criteria for expediting examination under the GPPH?

In order to request expedited examination under the GPPH the Australian patent application must be “appropriately associated” with a corresponding foreign or PCT application.  The claims of the Australian application must “sufficiently correspond” to the foreign or PCT application and at least one of the claims being prosecuted in Australia must have been found to be allowable/patentable by a participating foreign patent office, International Searching Authority, or International Preliminary Examination Authority.

Claims will be considered to “sufficiently correspond” when the claims are the same as, similar to, or narrower in scope than the claims indicated as allowable/patentable.  This can be achieved by amending the Australian claims prior to requesting examination.

How must the applications be “associated” to expedite examination under the GPPH?

Under the GPPH the Australian patent application is considered to be “associated” with the corresponding foreign or PCT application when:

  1. The Australian application claims priority from the foreign or PCT application;
  2. Both the Australian and foreign application are based on the same PCT application;
  3. Both the Australian and foreign or PCT application claim priority from a common priority document;
  4. The Australian application is the basis of the priority claim for the overseas or PCT application; or
  5. The Australian application is a divisional of an application that meets the criteria of (i), (ii), (iii) or (iv).

The foreign or PCT application being used as the basis for expediting the Australian application can be based on a first filing in an office that is not participating in the GPPH.

Which intellectual property offices does Australia have GPPH agreements with?

The patent offices / countries participating in the GPPH agreement are:

  • 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*

* PCT applications examined by these offices acting as International Search Authority or International Preliminary Examination Authority can also be used as the basis for expediting examination under the GPPH.

Harriet Sandstad.