What is the Global Patent Prosecution Highway?

The Australian Patent Office is one of 13 patent offices from around the globe that have joined forces to create a Global Patent Prosecution Highway (GPPH) pilot program, which commenced on 6 January 2014.

Under the GPPH pilot program – where an applicant receives a ruling from a participating patent office that at least one claim in a patent application is allowable – the applicant may request that another participating patent office accelerate examination of a corresponding patent application.

In Which Countries can Examination be Accelerated?

Previously, Australia only had an ongoing Patent Prosecution Highway agreement with the United States. The GPPH now provides Australian patent applicants with access to accelerated examination in the following countries:

  • Canada
  • Denmark
  • Finland
  • Japan
  • South Korea
  • Norway
  • Portugal
  • Russia
  • Spain
  • United Kingdom
  • United States.

What are the Requirements for Accessing the GPPH?

In order to be eligible for accelerated examination under the GPPH, the following key requirements must be met:

  • at least one claim in a patent application filed at a participating patent office must have been deemed allowable
  • the patent application in which examination is to be accelerated must have the same priority date as the patent application in which at least one claim has been deemed allowable
  • the claims of the patent application in which examination is to be accelerated must be the same as, similar to, or of a narrower scope than, the claims deemed allowable.

Accelerated examination under the GPPH is also available for a patent application based on a written opinion or examination report of a corresponding Patent Cooperation Treaty application (issued by a participating patent office acting as the International Searching Authority or International Preliminary Examination Authority) that indicates that at least one claim is allowable.

What are the Benefits of Utilising the GPPH?

The GPPH provides a means to expedite examination of patent applications in many jurisdictions, including those where expedited examination was previously not readily available. The GPPH is particularly advantageous where an applicant requires the grant of patents quickly in a number of participating jurisdictions. By increasing cooperation between participating patent offices around the world, the GPPH should simplify patent examination and prosecution, ultimately resulting in reduced costs to applicants.

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