Patent offices around the world are increasingly developing ways to simplify the patent process for those who file corresponding patent applications in a number of countries. Principally, the initiatives aim to encourage consistency of examination between the patent offices of different countries and to provide greater certainty for patent owners and would-be infringers. They also aspire to reduce costs by eliminating duplication of effort between offices.
Recently, an agreement has been reached between the patent offices of Australia, Canada and the UK (the so-called "Vancouver Group") to co-operate with each other to make patent examination in those countries easier, faster and cheaper. We explain the way it will work below. This agreement goes beyond existing schemes like the Patent Prosecution Highway (PPH), also outlined below.
The Vancouver Group initiative is welcome news to those who file patent applications in Australia, Canada and the UK, which includes many New Zealand companies. For it to be of most benefit to New Zealand companies, the Intellectual Property Office of New Zealand (IPONZ) will need to sign up to the project along with its counterpart offices. We understand that this is hoped for in the future but, as with so many other issues in domestic patent law at the moment, we are likely to need to wait until the new Patents Act comes into force so that New Zealand's patent examination criteria are aligned with those of the Vancouver Group countries.
Summary of the Vancouver Group Agreement
The agreement of the Vancouver Group is based on several "mutual exploitation principles":
- Where possible the patent office of a Vancouver Group country will rely on a search or examination performed by another office. An office can perform further searching and examination if it deems it necessary;
- The patent offices will take the initiative and rely on the earlier work of other offices without applicants having to request it;
- Applicants will be kept informed of where work of another office is relied upon. If further search or examination is required, both the applicant and the earlier office will be given feedback as to the reasons this was necessary;
- It does not matter where the patent application was first filed; and
- If one Vancouver Group patent office indicates a claim is allowable (or grants a patent), the applicant can apply to the other offices for expedited examination of the corresponding applications.
Contrast with the Patent Prosecution Highway
The Patent Prosecution Highway (PPH) is the name given to a set of existing initiatives between patent offices of different countries that is also intended to make patent examination easier and faster for applicants filing applications in more than one country.
The idea is that if claims are accepted in one country, accelerated examination can be requested in a PPH-partner country.
Currently, PPH arrangements in some form or another exist between various combinations of patent offices in the following countries: Australia, Canada, Denmark, Europe, Finland, Germany, Japan, Korea, UK and the US.
Although an increasing number of patent offices are becoming party to PPH agreements, there has been some criticism of its complexities and the increased burden placed on the applicant, despite its intentions to the contrary. The degree of uptake of the scheme varies between countries, but some commentators believe it to have been slow.
Problems associated with some of the PPH agreements include:
- There is a heavy burden on the applicant to show how every claim of an application corresponds to those of the corresponding accepted application. Due to the amount of time and paperwork involved, this process involves costly attorney fees;
- The scheme cannot be used if examination has already commenced in the country in which the applicant wishes to accelerate examination; and
- The application must have been first filed in one of the countries in the PPH scheme.
While useful in some circumstances, the PPH still provides a number of barriers to patent applications quickly moving through the patent system at low cost.
Once the Vancouver Group agreement is implemented, it promises to provide patent applicants with a truly useful system for quickly and cheaply progressing patent applications filed in two or more of Canada, Australia and the UK. Consistency in the scope of claims of patents in different countries is beneficial to everyone; it gives a patentee confidence in the validity of its monopoly and provides greater clarity to competitors as to exactly what is protected.
The easy-to-use expedited examination process in Canada may mean this a frequently used route to speed up patent examination in Australia and the UK. The Canadian IP Office may even see a small rise in applications as a result of this.
If the system delivers on its promise we expect it to be frequently used by those filing in Canada, Australia and the UK. We might also expect other countries to join the scheme and New Zealand should be near the top of the list to do so. This highlights the importance of a swift enactment of the Patents Bill to put New Zealand patent legislation on a par with that of other countries and provide the best opportunity for New Zealand innovators.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
James and Wells is the 2009 New Zealand Law Awards winner of the Intellectual Property Law Award for excellence in client service.