The Patent Prosecution Highway (PPH) has been in use for several
years now and can be used to speed up the patent examination
process in both Australia and the United States.
Even when an applicant for an Australian patent application
files an early voluntary request for examination the typical wait
for an examination report is around one year. In some areas of
technology the delay is again approaching two years. IP Australia
will act to expedite examination at the request of the applicant in
particular circumstances including actual or apprehended
infringement and the subject of the patent application being
"green" technology. Such requests typically result in an
examination report within four to six weeks.
The process of PPH in Australia
There is a more general approach available which is proving
quite effective though not yet widely used. Australia is a party to
an inter-patent office program known as the Patent Prosecution
Highway (PPH) Pilot Program. Under this program, an applicant for
an Australian patent application can request expedited examination
on the basis that corresponding claims have been allowed, or
indicated as allowable, by a patent examiner in other participating
countries of the program. Thus, for example, an applicant for an
Australian patent application who has obtained allowance of a
corresponding patent application in the United States can request
PPH examination in Australia on the basis of the patent claims
allowed in the United States.
PPH can also be requested on the basis of a clear international
search report and preliminary opinion on patentability on a PCT
The process is quite straightforward and the paperwork
relatively minimal. We are finding that IP Australia examines the
applications within a few weeks and in most cases promptly allows
PPH vs Modified Examination
With the abolition of modified examination in April 2013, PPH
examination is likely to become more popular. Relative to modified
examination, PPH examination has two significant advantages and one
The advantages are the much speedier processing by IP Australia
and the removal of the requirement to bring the Australian
specification into exact conformity with the corresponding foreign
granted patent: this resulted in undesirable textural outcomes in
some cases that required rectification after acceptance.
The disadvantage is that, if a foreign patent application was
granted with multiple independent claims that in Australia would be
viewed as multiple inventions, the examiner could not object to
this under modified examination, whereas under PPH such an
objection can be raised by the Australian examiner. A granted
patent can only contain one invention under Australian law. Despite
the tests for determining whether there are one or more inventions
being nominally the same in the United States and Australia, it is
still quite common for US patents to be granted with claims to
multiple inventions. Thus PPH examination based on a US patent
allowance or grant will not avoid division of the Australian patent
application in some cases.
PPH in the US based on an early allowance of an
Australian patent application
As a footnote, the PPH program can be used in reverse by
Australian applicants to gain speedier examination of their US
applications. Where by voluntary examination early
acceptance/allowance is obtained in Australia, a PPH request can be
filed in the US to move examination of the US application up the
queue. As a means of expedition, this certainly works but we are
not expecting US examiners to be so ready to grant US applications
simply because the Australian counterpart has been allowed!
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.
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