What is it?
Under the GPPH pilot scheme it will be possible to request accelerated examination of a patent application at any of the participating offices if a claim of an equivalent application at any other participating office has been found to be acceptable, and the criteria outlined below are met. The Pilot Program will apply to Convention as well as to PCT Applications.
Who are the participating offices?
- Australian Patent Office (“IP Australia”)
- Canadian Intellectual Property Office (CIPO)
- Danish Patent and Trademark Office (DKPTO)
- National Board of Patents and Registration of Finland (NBPR)
- Japanese Patent Office (JPO)
- Korean Intellectual Property Office (KIPO)
- Nordic Patent Institute (NPI)
- Norwegian Industrial Property Office (NIPO)
- Portuguese Institute of Industrial Property (INPI)
- Russian Federal Service for Intellectual Property (ROSPATENT)
- Spanish Patent and Trademark Office (SPTO)
- United Kingdom Intellectual Property Office (UKIPO)
- United States Patent and Trademark Office (USPTO)
When does it start?
A request to proceed via the GPPH may be filed from 6 January 2014.1
What are the criteria?
A request for accelerated examination may be made if the following criteria are met:
- The applications before the Office of Earlier Examination (OEE) and the Office of Later Examination (OLE) have the same earliest date (this may be the priority date or the filing date).
- At least one claim is considered allowable by the OEE.
- All the claims presented for examination correspond sufficiently to one or more of the claims found allowable by the OEE.
- The OLE has not begun substantive examination of the application.2
- A request for substantive examination must have been filed at the OLE, either at the time of the GPPH request or previously.
- A PCT written opinion from either the International Searching Authority or the International Preliminary Examination Authority or an International Preliminary Report on Patentability (IPRP) from any of the other participating offices may substantiate the request for accelerated examination.3
Are there advantages to accelerated prosecution?
Expedited prosecution of a patent application will enable the applicant to gain a patent more quickly which may, for example, help them in obtaining investment or enable them to enforce the patent against a potential infringer.
A further benefit is that the GPPH scheme could enable expedited prosecution in jurisdictions that do not currently have a conventional accelerated examination procedure.
Are there disadvantages to accelerated prosecution?
Expedited prosecution will bring forward the dates by which prosecution costs are incurred by the applicant and, as with any pilot scheme, the process is untested. It is hoped that examination should proceed more quickly through using it, but that will not be known until the scheme is up and running.
It should also be noted that the European Patent Office and the Chinese Patent Office are not participating and it is not clear how different laws concerning, for example, the patentability of business methods and methods of medical treatment, will be taken into account by the various participating offices.