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 (see, http://www.shelstonip.com/news_story.asp?m=6&y=2008&nsid=5)
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 burden on the applicant to
demonstrate how each claim of a "first" application
matches a claim of a corresponding application in a partner
The PPH scheme cannot be used if examination has already commenced
in the country in which expedited examination would otherwise be
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
The onus is upon each patent office to ascertain earlier work
of any partner offices (i.e., this is not an
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;
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.
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.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
IP is the legal property in the innovation in your business and it is that which drives your revenue and profit growth.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).