There is a new option now open to patent applicants for
progressing a patent application more quickly to examination, and
it is available in a number of major jurisdictions across the
globe. This option is known as the Global Patent Prosecution
Highway (GPPH) and allows patent applicants to utilise the
successful examination in one jurisdiction to have the commencement
of examination of an application accelerated in another
What Patent Offices Are Involved?
Effective from 6 January 2014, the GPPH agreement is between the
Australian Patent Office (IP Australia) and the following sixteen
Canadian Intellectual Property Office
Danish Patent and Trademark Office
National Board of Patents and Registration of Finland
Hungarian Intellectual Property Office
Icelandic Patent Office
Israel Patent Office
Japan Patent Office
Korean Intellectual Property Office
Nordic Patent Institute
Norwegian Industrial Property Office
Portuguese Institute of Industrial Property
Russian Federal Service for Intellectual Property
Spanish Patent and Trademark Office
Swedish Patent and Registration Office
United Kingdom Intellectual Property Office
United States Patent and Trademark Office (USPTO)
How Does It Work?
The GPPH will supersede the Patent Prosecution Highway program
between the USPTO and IP Australia.
Under the GPPH, where an applicant has at least one claim that
is accepted (allowed) as patentable from one of the participating
national patent offices, the applicant can request that another
participating patent office fast track the examination of a
corresponding application in the other jurisdiction. The accepted
claim can also come from a corresponding PCT application where the
international receiving office is one of the participating national
patent offices and a claim has not been objected to in a PCT
written opinion and/or an International Preliminary Report on
It is important to note that the GPPH does not guarantee that
the accepted claim will be granted for the other national
application. The GPPH will only accelerate the commencement of
examination of the other national application.
It is noted that the claim set that an applicant wishes to
accelerate to examination must contain the accepted claim from the
corresponding foreign application. There is no express prohibition
on any additional claims being contained in the claim set (subject
to local patent laws).
The GPPH is a relatively inexpensive means by which an applicant
can utilise the early examination of one application to accelerate
proceedings in other jurisdictions where the application process is
slower or where examination backlogs are greater. For example, an
applicant may wish to rely on earlier examination in Australia for
a certified innovation patent to accelerate proceedings for a
corresponding Japanese application.
The GPPH opens up many options for accelerating your patent
applications. However, it is emphasised that planning and
preparation is required to gain proper leverage from this new
agreement. Importantly, any IP strategy should be tailored to your
specific circumstances and the relevance of the above advantages to
your applications should be viewed in the context of your portfolio
as a whole and the surrounding commercial objectives. As such, the
strategy of using the GPPH may not necessarily be suitable for all
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.
Shelston IP has been awarded the MIP Global Award for
Australian IP Firm of the Year 2013.
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