Australia and Europe hit the Patent Prosecution Highway

Australian patent applicants take note: there is now a way to speed up the progress of your corresponding European application. If you obtain an accepted Australian application (or have a granted Australian patent) and have at least one of those accepted claims in your European application, you can use the Patent Prosecution Highway (PPH) to progress your European application more quickly to examination.

 

A new PPH pilot program has been introduced on the basis of an agreement between the Australian Patent Office (IP Australia) and the European Patent Office (EPO). Similar to the Global Patent Prosecution Highway (GPPH), this option allows patent applicants to utilise the successful examination in one jurisdiction to have the commencement of examination of an application accelerated in another jurisdiction.

How does it work?

Under the PPH, where an applicant has at least one claim that is accepted (allowed) as patentable from either IP Australia or the EPO, the applicant can request that the other participating patent office fast track the examination of a corresponding application in the other jurisdiction.

It is important to note that the PPH does not guarantee that the accepted claim will be granted for the application in the other jurisdiction. The PPH will only accelerate the commencement of examination of that other 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 the relevant local patent laws).

Benefit to Australian applicants

Given the typical time frames for examination of applications in the two jurisdictions, it is most likely that the major benefit for applicants of Australian applications will be the ability to accelerate examination of a corresponding European application. IP Australia will typically commence and complete examination several years before the EPO will commence examination of a corresponding application. As such, the short backlog of IP Australia can be used to an applicant’s advantage to speed up the progress of the corresponding European application.

This is equally advantageous for applicants of Australian patent applications located within and outside Australia.

Conclusion

The expansion of the PPH program opens up an option for accelerating your European patent application (or in some cases your Australian patent application). 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 PPH may not necessarily be suitable for all patent applications and there can be clear advantages in some circumstances to deferring action on a given patent application.

More information on the PPH can be found here.

Furthermore, if you wish to explore the PPH within the context of your particular commercial circumstances, please do not hesitate to contact any of our attorneys.