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 are:
- Australia
- Norway
- Canada
- Portugal
- Denmark
- Russia
- Finland
- Spain
- Japan
- United Kingdom
- Korea
- USA
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.
