A classic patent arbitrage: the global patent prosecution highway

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 jurisdiction.

 

Which patent offices are involved?

Effective from 6 January 2014, the GPPH agreement is between the Australian Patent Office (IP Australia) and the following sixteen patent offices:

  • 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 Patentability.

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).

Possibilities

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.

Conclusion

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 patent applications.

More information on the GPPH can be found here.