Streamlining patent prosecution with the Global Patent Prosecution Highway

The Global Patent Prosecution Highway (GPPH) has been introduced in 19 participating patent offices with a view to streamlining grant of patents in these offices by sharing work that has already been carried out by their examiners. If one claim is found allowable in one of the offices, you can have examination and prosecution accelerated in any of the others.

Background

When patent applications for the same invention are filed at the various patent offices around the world, each of these patent offices typically carry out a search to establish what the closest relevant prior art is. This prior art will have an effect on whether a broad scope of protection is available for that invention, or not.

Clearly if each patent office carries out searching through similar databases, using similar keywords, then this will result in duplication of work at the various patent offices. Given that most patent offices have serious backlogs, this duplication is to be avoided at all costs. For this reason, patent offices around the world have in the past introduced bilateral work sharing arrangements called Patent Prosecution Highways (PPH), whereby partnering countries with credible examining divisions have agreed to share the results of searching that has been carried out by them.

Further, where claims have been found allowable in one patent office, accelerated examination could be requested in a partnering patent office, to try and speed up prosecution and reduce patent backlogs. Australia has in the past partnered with the United States Patent Office (USPTO) in such an arrangement. However these arrangements have only been bilateral in nature, and limited participation by countries having such agreements.

Many of the various PPH’s were subsequently expanded to include Patent Cooperation Treaty (PCT) patent applications. Under this expansion, an applicant could request accelerated examination in a participating country on the basis of a favourable International preliminary report on patentability during the international phase of a PCT patent application.

The Global Patent Prosecution Highway (GPPH)

The Global Patent Prosecution Highway (GPPH) has simplified these arrangements by replacing a large number of bilateral agreements with a single framework. This was remedied by the introduction of the pilot Global Patent Prosecution Highway (GPPH) on 6 January 2014.

Patent offices participating in the GPPH included:

1. IP Australia (IP Australia)
2. Canadian Intellectual Property Office (CIPO)
3. Danish Patent and Trademark Office (DKPTO)
4. Finnish Patent and Registration Office (PRH)
5. Hungarian Intellectual Property Office (HIPO)
6. Icelandic Patent Office (IPO)
7. Israel Patent Office (ILPO)
8. Japan Patent Office (JPO)
9. Korean Intellectual Property Office (KIPO)
10. Nordic Patent Institute (NPI)
11. Norwegian Industrial Property Office (NIPO)
12. Portuguese Institute of Industrial Property (INPI)
13. Russian Federal Service for Intellectual Property (ROSPATENT)
14. Spanish Patent and Trademark Office (SPTO)
15. Swedish Patent and Registration Office (PRV)
16. United Kingdom Intellectual Property Office (UKIPO)
17. United States Patent and Trademark Office (USPTO)As of 1 November 2014, the pilot GPPH program has been extended to include:
18. Austrian Patent Office (APO)
19. Intellectual Property Office of Singapore (IPOS)

What this means for you

Under the GPPH, a favourable outcome in any of the participating patent offices (i.e. as long as at least one claim has been found to meet the required standards for patentability) can be used to accelerate examination in any of the others.

This does not mean that the claims will automatically be allowed or granted, merely that the searching and examination work product of the initial examiner will be taken into account by the later examiner, which in theory should reduce the number of steps required for a favourable outcome in the later patent application. The patentability standards set by the law of the country of the later patent application must still be met.

Hopefully, the time and effort (and hopefully cost) required to get a patent granted should be reduced in participating countries.

Further, where member patent offices have been used as PCT searching or examining authorities, then this work product will be recognised by the other participating patent offices. IP Australia is a PCT International Searching Authority and International Preliminary Examination Authority.

You should also understand that the GPPH program cannot be used to expedite examination of an Australian application where IP Australia was the International Searching Authority or International Preliminary Examination Authority- alternative processes for expedited examination are provided just for this purpose. However, by requesting expedited examination in Australia, an early favourable outcome can be obtained for claims in Australia, which can then be used to streamline examination in any of the other participating countries through the GPPH.

Requirements to use the GPPH

To use the PPH, the Australian complete patent applications must be associated with a foreign patent application in one of a few possible required relationships. Some examples of such required relationships include:

• both applications being based on the same PCT patent application;
• one application claiming priority from the other, or from another common priority document;
• the non-Australian application being a PCT application designating a participating patent office as the International Preliminary Examining Authority

This list is not exhaustive.

If you’re interested in trying to streamline the examination and prosecution of your patents around the world, please feel free to give one of our patent attorneys a call.