IP Australia recently announced it had joined the Global Patent
Prosecution Highway (GPPH) pilot programme. The GPPH is a
multilateral agreement between thirteen Patent Offices that will
provide patent applicants with an option to accelerate patent
examination in one participating Patent Office based on a
favourable examination outcome in any of the other Offices. The
overall aim of the programme is to reduce patent pendency (i.e. the
time from application to grant) and to increase efficiencies
between Patent Offices by relying on the search and examination
carried out by other offices.
There are a number of reasons that an applicant may wish to
accelerate examination. Firstly, earlier examination provides
information on the novelty and inventiveness of the invention which
is a good guide to the likely scope of protection that will be
granted in other jurisdictions. This assists with development of
IP/commercialisation strategy and reduces perceived risk by
Secondly, earlier examination potentially equals earlier grant
which has the advantage of enabling the patentee to
license/sell/enforce their patent. Additionally, the asset value
associated with the granted patent can be used to garner further
investment or support.
The GPPH pilot commences on 6 January 2014 and the participating
Patent Offices are:
Canadian Intellectual Property Office
Danish Patent and Trademark Office
National Board of Patents and Registration of Finland
Japan Patent Office
Korean Intellectual Property Office
Nordic Patent Institute (covers Denmark, Iceland and
Norwegian Industrial Property Office
Portuguese Institute of Industrial Property
Russian Federal Service for Intellectual Property
Spanish Patent and Trademark Office
United Kingdom Intellectual Property Office
United States Patent and Trademark Office
For these states, the GPPH aims to replace the current Patent
Prosecution Highway (PPH) system, which is made up of a number of
bilateral agreements between Patent Offices. The first PPH
bilateral agreement between the United States Patent and Trademarks
Office and the Japanese Patent Office commenced in 2006. Since
then, numerous other bilateral PPH agreements have come into
effect, resulting in greater efficiencies for Patent Offices and
Is New Zealand in the slow lane?
The Intellectual Property Office of New Zealand (IPONZ) is a
notable absentee from the GPPH. IPONZ is not currently party to any
PPH agreements and there has been no word from the New Zealand
Government on whether IPONZ will join the GPPH in the future.
Consequently, it will not be possible to accelerate examination at
IPONZ based on favourable examination elsewhere in the world. It
is, however, worth noting that New Zealand patent examiners often
look at corresponding overseas applications when examining the
equivalent application in New Zealand. Allowance in Europe, the US,
or Australia, for example, is often persuasive.
IPONZ is also efficient in processing applications and does not
have significant delays in patent examination compared to other
countries. Convention applications are examined within 15 working
days of filing. Depending on the technology, national phase
applications are examined 8 to 20 months from the 31 month deadline
for entering the New Zealand national phase. Examination
correspondence is examined within 15 working days of receipt.
Accelerated examination may also be requested in New Zealand for
"good and substantial reasons", for example if
infringement is suspected.
There are a number of notable absentees from the GPPH including
the Korean Intellectual Property Office (KIPO) and the European
Patent Office (EPO). We wait with interest to see if KIPO and the
EPO join the GPPH in the future.
Will New Zealand Patent applicants be able to hitch a ride on
While it remains to be seen whether IPONZ will join the GPPH,
the New Zealand Government recently announced that IP Australia and
IPONZ will introduce a single patent application and examination
If a patent application is filed into Australia and New Zealand,
a single examiner will examine each application based on the laws
of each country. Using this system may accelerate examination in
New Zealand by default. For example, if an applicant files a patent
application into both Australia and New Zealand and requests
accelerated examination of the Australian application through the
GPPH, it is hard to imagine that the examiner will not also examine
the New Zealand application at the same time.
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