Patent prosecution can be a slow process, and it is often
difficult to enforce patent rights until a patent has granted in a
specific country. To address this issue, a number of patent
jurisdictions have joined together to form the Global Patent
Prosecution Highway (GPPH).
What is the GPPH?
Under the GPPH, an applicant with an allowable claim in one of
the GPPH member countries can fast track examination of their
application in another member country. The idea is that fast track
examination will take advantage of examination work carried out by
the first patent office which should lead to more efficient (and
faster) examination and grant.
From 6 January 2014, Australian patent applicants can take
advantage of the relatively fast examination procedures provided by
the Australian patent office to expedite prosecution of their
patent applications in a number of important jurisdictions.
At present, the patent offices participating in the GPPH
If successful, it is anticipated that other patent offices will
join the initiative.
How can applicants take advantage of the GPPH?
In order to take advantage of the GPPH, the following conditions
must be met:
The Australian application and the application to be fast
tracked must have the same priority date;
The Australian patent office must have found at least one claim
of the Australian application allowable;
The claims to be examined under the GPPH must sufficiently
correspond to the allowed claims;
A request for examination and a request for processing under
GPPH must be filed; and
Examination in the country where GPPH is sought must not have
started although it is still unclear at this stage whether
individual offices may still allow this.
While each office that examines a case under the provisions of
the GPPH will independently examine the case on its merits, it is
anticipated that examination under the GPPH will not only expedite
grant, it will also reduce prosecution costs.
What does this mean to me?
Under the new arrangements, you will be able to speed up
prosecution of your patent application in a number of important
jurisdictions based on the allowance of patent claims in your
Australian application. This should speed up patent grant and
reduce prosecution costs.
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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