New Zealand joins the Global Patent Prosecution Highway
As of 6 July 2017, the Intellectual Property Office of New Zealand (IPONZ) has joined the Global Patent Prosecution Highway (GPPH), providing New Zealand patent applicants mechanism by which to accelerate the progress of their application and/or accelerate the progress of a corresponding foreign application in a number of major jurisdictions across the globe.
IPONZ joins 17 other patent offices participating in the GPPH, including IP Australia and the US Patent and Trademark Office. More information on the GPPH including a complete list of the participating patent offices that are part of the agreement is found here.
How does it work?
Under the GPPH, when at least one claim of a patent is accepted (allowed) by one of the participating national patent offices, the patent applicant can request that another participating patent office fast track examination of a corresponding application. Patent applicants can also utilise the GPPH to accelerate examination in a participating patent office based on 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 Patentability.
It is important to note that the GPPH does not guarantee that the accepted claim will be granted for the other national application and only accelerates the commencement of examination of the other national application. Accordingly, an allowed foreign claim provides no guarantee that a corresponding claim will be held allowable when assessed under New Zealand law. Moreover, examination in IPONZ typically commences relatively quickly anyway (there is an approximate interval of three months from the date of requesting examination to the issuance of the first examination report). As such, it is more likely that the GPPH will be used as a tool for accelerating examination in other jurisdictions based upon a relatively quick allowance in IPONZ (rather than the converse).
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.
Furthermore, in cases where applicants avail of the GPPH in order to accelerate examination in New Zealand, the claims to be examined by IPONZ must be of identical or similar (including narrower) scope to the claims of the earlier examined and allowed foreign application. As such, the claims to be examined by IPONZ cannot be broader in scope than those of the earlier examined foreign application.
IPONZ do not charge any additional fee for requesting accelerated examination by way of GPPH, but the standard fee for requesting examination will be payable.
The GPPH provides a relatively inexpensive means by which an applicant can utilise the early examination of one application to accelerate prosecution in other jurisdictions where the application process is slower or where examination backlogs are greater. IPONZ joining the GPPH increases the options available to applicants in their global or regional prosecution strategy.
Additional information in relation to IPONZ joining the GPPH can be found here.
Should you wish to explore the GPPH within the context of your particular commercial circumstances, please do not hesitate to contact the authors of this article, or your regular Shelston IP patent attorney.