Harmonisation of patent laws and practices is occurring slowly but surely throughout the world. It follows that the less "idiosyncratic" a country's laws and practices are, the cheaper and easier it should be to obtain patent protection in that country. Harmonisation thereby has potential benefits to Australian patent applicants seeking protection in countries closely aligned with our own patent system.
We have, in the past reported on a so-called "Patent Prosecution Highway" (PPH), which is a combined initiative of the Australian and United States patent offices. The AU-US PPH is intended to shorten examination delays before each patent office by leveraging work conducted by the other. Under the PPH, allowance of a claim in either jurisdiction provides an avenue to accelerate examination in the other. This in turn encourages consistency of examination and provides greater certainty both for patentees and competitors.
Whilst sound in theory, attempts by Australian patent applicants to make use of the AU-US PPH have led to criticism of the scheme's complexity and the increased burden on the applicant. The perceived weaknesses of the AU-US PPH include:
The PPH scheme cannot be used if examination has already commenced in the country in which expedited examination would otherwise be sought; and
The application must have been first-filed in one of the countries party to the PPH scheme.
The above limitations have rendered the AU-US PPH scheme — and indeed many of its variants throughout the world, largely ineffectual in practice.
Recently however, another PPH-type arrangement has been established between the so-called "Vancouver Group", which comprises the patent offices of Australia, Canada and the United Kingdom. However, this agreement goes even further than the AU-US PPH — and is based on several "mutual exploitation principles", namely:
- To the extent possible, one patent office will rely on a search or examination performed by a "partner" office. However, any office is free to perform further searching if it is deemed necessary;
- The onus is upon each patent office to ascertain earlier work of any partner offices (i.e., this is not an applicant-driven procedure);
- An applicant is to be kept apprised of where the earlier work of a partner office is to be relied upon. If further searching or examination is required, both the applicant and the partner offices will be advised as to the reasons this was considered necessary; and
- The applicant has the facility to apply for expedited examination in one or more partner offices as soon as a first patent office indicates any claim is in order for Allowance.
Once the Vancouver Group agreement is implemented, applicants will be provided with means for quickly and cheaply progressing patent applications filed in two or more of Australia, Canada and the United Kingdom.
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