17 January 2014
Practice Group:
IP Procurement and
Portfolio
Management
Australia Joins the Global Patent Prosecution
Highway
By Nigel Lokan and Alex Dunlop. Contributing author, John Hall.
What is the Global Patent Prosecution Highway?
The Australian Patent Office is one of 13 patent offices from around the globe that have
joined forces to create a Global Patent Prosecution Highway (GPPH) pilot program,
which commenced on 6 January 2014.
Under the GPPH pilot program – where an applicant receives a ruling from a participating
patent office that at least one claim in a patent application is allowable – the applicant
may request that another participating patent office accelerate examination of a
corresponding patent application.
In Which Countries can Examination be Accelerated?
Previously, Australia only had an ongoing Patent Prosecution Highway agreement with
the United States. The GPPH now provides Australian patent applicants with access to
accelerated examination in the following countries:
•
Canada
•
Denmark
•
Finland
•
Japan
•
South Korea
•
Norway
•
Portugal
•
Russia
•
Spain
•
United Kingdom
•
United States.
What are the Requirements for Accessing the GPPH?
In order to be eligible for accelerated examination under the GPPH, the following key
requirements must be met:
•
at least one claim in a patent application filed at a participating patent office must
have been deemed allowable
•
the patent application in which examination is to be accelerated must have the
same priority date as the patent application in which at least one claim has been
deemed allowable
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Australia Joins the Global Patent Prosecution Highway
•
the claims of the patent application in which examination is to be accelerated
must be the same as, similar to, or of a narrower scope than, the claims deemed
allowable.
Accelerated examination under the GPPH is also available for a patent application based
on a written opinion or examination report of a corresponding Patent Cooperation Treaty
application (issued by a participating patent office acting as the International Searching
Authority or International Preliminary Examination Authority) that indicates that at least
one claim is allowable.
What are the Benefits of Utilising the GPPH?
The GPPH provides a means to expedite examination of patent applications in many
jurisdictions, including those where expedited examination was previously not readily
available. The GPPH is particularly advantageous where an applicant requires the grant
of patents quickly in a number of participating jurisdictions.
By increasing cooperation between participating patent offices around the world, the
GPPH should simplify patent examination and prosecution, ultimately resulting in
reduced costs to applicants.
For further information on the GPPH, please contact Nigel Lokan or Steven Wulff.
Authors:
Nigel Lokan
nigel.lokan@klgates.com
+61.2.9513.2484
Alex Dunlop
alex.dunlop@klgates.com
+61.3.9205.2062
Contact:
Steven Wulff
steven.wulff@klgates.com
+61.3.9205.2147
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