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Wednesday, January 15, 2014

Accelerated harmonisation? Global Patent Prosecution Highway launches

By Helen McFadzean, Patent Attorney

The Global Patent Prosecution Highway (GPPH) is an international program which offers accelerated examination procedures between Australia and 16 other participating patent offices around the world, including the UK, US, Canada, Japan and Korea. As we foreshadowed late last year, the pilot program launched on 6 January 2014. The full list of current participating patent offices can be found here.

Details of the scheme

The GPPH will allow patent applicants to accelerate examination of a patent application at any of the participating offices if at least one claim of a corresponding patent application has already been found to be allowable by any other participating offices. This extends to decisions issued by a participating office in its capacity as an International Search and Examination Authority under the Patent Cooperation Treaty.

The GPPH seeks to simplify previous bilateral agreements between various national offices by providing a common framework for expedited examination. Two patent applications must have the same priority or filing date, and there must be sufficient correspondence of claims between the two applications. The GPPH request must be accompanied by a request for substantive examination; however, particular patent offices may choose to allow a GPPH request if substantive examination of the application has already commenced. IP Australia will be evaluating the results of the program with the other participating offices to determine if and how the program should be fully implemented beyond the pilot arrangement.

Notable non-participants in the GPPH include the European Patent Office (EPO) and the Chinese Patent Office (SIPO). EPO and SIPO are currently considering an alternative PPH program named IP5 PPH, along with the Japanese, Korean and the US patent offices.

Patent filing strategy

Based on our experience with the previous PPH system, we consider that the GPPH could prove to be an important part of a global filing strategy. In particular, an Australian application can serve as a very effective starting point. Expedited examination in Australia is already relatively easy, cost effective and of high quality, and a first examination report can be expected to be received within about two months of the examination request being filed. Patent applicants can therefore take advantage of the GPPH system by filing in Australia and proceeding with early and expedited examination as a starting point for fast-tracking examination in other countries around the world.

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