Patent Prosecution Highway

On 14 April 2008 IP Australia and the US Patent and Trademark Office (USPTO) launched a 12 month trial program called the Patent Prosecution Highway (PPH).

Under this PPH program an applicant of a patent application filed at either Office may request accelerated examination of their application provided that a corresponding application has been filed with the other Office, has been examined, and deemed to contain at least one allowable claim.

In other words, favourable examination results obtained in one country may be used to accelerate the examination process in the other country, hopefully leading to early grant of patent rights.

For applicants having interests in both Australia and the US, this PPH program may provide a valuable tool for fast-tracking examination (and hopefully grant) of their patent applications in these countries.

It’s important to note that other than accelerating the examination procedure, there is no change to the standard of examination or the issues considered by IP Australia or the USPTO. Hence, usual standards of novelty, inventive step and other legislative requirements still apply.

In order to take advantage of this trial PPH program, there must be a prescribed relationship between the applications filed at both Offices. For example, the corresponding Australian application may claim priority from a US application (which could be a provisional application), or may be derived from a PCT application (with or without a priority claim). The same requirements obviously apply in reverse where the US application is related to an Australian application.

The formal requirements of the PPH process are relatively straightforward. The official requirements and/or documentation required for accelerated examination under the PPH program include: the corresponding Australian or US application must have at least one allowable claim; a copy of the office action(s) issued upon the corresponding Australian or US application must be provided (or be available online) as evidence of the allowable claim(s); an office action must not have already issued upon the relevant application at the time of filing a request for accelerated examination under the PPH; a copy of the claims examined by IP Australia or the USPTO, and copies of subsequent amended claims found allowable by IP Australia or the USPTO where appropriate, must be provided; the claims of the Australian or US application must have the same or similar scope to the allowed claims; and, a completed claim correspondence table showing the relationship between the claims of the Australian or US application and those of the allowed claims of the relevant application must be provided.

As this PPH trial is only in its infancy, the effects and uptake of same are yet to be seen. Similar PPH trials (which in some instances, have become official procedures) exist between several other patent offices, including the Offices of the US, Japan, South Korea, the United Kingdom, and Germany. The uptake of the PPH procedures offered by these Offices has been slow, though it is believed that same will steadily increase over time. To date, Japanese applicants have been the biggest users of the available PPH programs.

It seems very likely that PPH or similar procedures will become official practices of many major patent offices in the not to distant future. With the growth of patent filings increasing rapidly each year, such programs are looked upon favourably by patent offices and are seen as a convenient means of improving the quality and efficiency of patent examination. PPH procedures are considered a valuable tool for reducing patent office workloads as the amount of rework required to perform examination can be drastically reduced.

FURTHER DETAILS:

The PPH program will be assessed by IP Australia and the USPTO at the end of the initial 12 month trial period, and if successful, could result in an extension of the trial for a further 12 month, or possibly the introduction of a permanent official procedure.

Should you have any queries about the PPH process, or are possibly interested in taking advantage of same, please do not hesitate to contact us.