Expediting your international patent applications via the GPPH

Many patent applicants seek international patent protection for their inventions, so they can acquire monopoly rights in the foreign jurisdictions where they are hope to obtain a meaningful market share for their invention.

These foreign applications usually rely on the international Paris Convention agreement. Under this agreement you can claim the filing date of the first related application as the priority date for all your subsequent foreign applications (a considerable benefit).

However, under this system each of your foreign applications will proceed independently of each other through the patent office of the country in which they are filed. There is often very little overlap between the examinations conducted by each separate patent office, with examiners in each office conducting independent investigations and raising their own objections to the local patent application.

In some countries is not uncommon for it to take several years for even the first examination report to be issued on a patent application.

The Australian patent office, IP Australia, has for many years been trialling a work-sharing program with patent offices of our major trading partners – most notably with the United States Patent and Trademark Office (USPTO).

This work-sharing program, known as the Patent Prosecution Highway or PPH, is intended to reduce the workload of patent examiners, by sharing the findings of examiners in partner offices. This should cut down on the examiner hours required to produce at least the first examination report on the local patent application.

This is good news for applicants, as it means you can expect to receive a formal examination report much sooner than would otherwise have been possible if your application was left in the normal examination queue.

Global Patent Prosecution Highway

Due to the success of the PPH programs, the program was extended internationally in early 2014, and its name changed to the Global Patent Prosecution Highway or GPPH.

The GPPH is a multinational agreement that currently encompasses 21 countries worldwide. Under the agreement each patent office share their investigations and findings with all the other GPPH participants. So, under the GPPH, if you receive a ruling from one of the participating national patent offices that at least one of the claims in your national application is allowable, you can request another participating office to fast-track the examination of your corresponding applications.

This means that, in many cases, once you have achieved acceptance, or grant of patent claims, in one jurisdiction – the ‘first acceptance office’ (FAO) – many of the partner patent offices will accept the findings of that FAO and grant patent rights to you.

In some cases, most notably in the United States, the patent examiners will still conduct an independent search, and are likely to raise new objections. However, the process is likely to be significantly quicker because:

• Any objections relating to previously overcome prior art (i.e. on the FAO) will be minimal
• The time it takes for the first examination report to be issued will be significantly reduced, reducing the overall time frame for you to achieve enforceable patent rights in each jurisdiction.

GPPH participating countries

The national patent offices participating in the GPPH presently include:

• Austrian Patent Office (APO)
• Australian Patent Office (IP Australia)
• Canadian Intellectual Property Office (CIPO)
• Danish Patent and Trademark Office (DKPTO)
• Estonian Patent Office (EPA)
• German Patent and Trade Mark Office (DPMA)
• National Board of Patents and Registration of Finland (NBPR)
• Hungarian Intellectual Property Office (HIPO)
• Icelandic Patent Office (IPO)
• Intellectual Property Office of Singapore (IPOS)
• Israel Patent Office (ILPO)
• Japan Patent Office (JPO)
• Korean Intellectual Property Office (KIPO)
• Nordic Patent Institute (NPI)
• Norwegian Industrial Property Office (NIPO)
• Portuguese Institute of Industrial Property (INPI)
• Russian Federal Service for Intellectual Property (ROSPATENT)
• Spanish Patent and Trademark Office (SPTO)
• Swedish Patent and Registration Office (PRV)
• United Kingdom Intellectual Property Office (UKIPO)
• United States Patent and Trademark Office (USPTO)

Eligibility

To be eligible to participate in the GPPH, your application must relate to a foreign application that has had a favourable examination report (meaning that the foreign patent office has ruled that at least one claim of your corresponding application is allowable).

For an Australian complete (non-provisional) patent application to qualify for the GPPH it must be related to a foreign application or PCT application in one of the following ways:

• The Australian application claims priority to the foreign application
• Both applications are based on the same PCT application
• Both applications claim priority to a common priority document
• The foreign application claims priority to the Australian application
• The other application is a PCT application designating a participating patent office, and the Australian application is a national phase of that PCT application
• The other application is a PCT application designating a participating patent office as the International Preliminary Examining Authority (IPEA), and the Australian application claims priority from that PCT application
• The other application is a PCT application designating a participating patent office as the International Preliminary Examining Authority (IPEA) and the Australian application is a priority document for that PCT application.

It is important to note that participation in the GPPH does not guarantee automatic acceptance of your foreign application, just because it has received a favourable patentability report in the FOA. The program still allows the examiner in each participating office to conduct their own independent patentability searches and to raise new objections to the acceptance and grant of the patent.

However, where the claims of your foreign application are substantially identical to the claims accepted by the FOA, it is likely that your application will also be accepted in the foreign country.

The biggest benefit to you is that the application process is likely to be much quicker, with significantly less prosecution or interaction with the foreign patent examiner and, consequently, much lower costs.

Conclusion

The GPPH can help you to significantly reduce the time required to secure international patent rights for your inventions, once the examination procedure has been concluded with a favourable outcome (meaning that at least one of your claims has been accepted as patentable) in at least one country that is a member of the GPPH program.

If you would like to discuss expediting the examination and prosecution of your foreign patent applications using the GPPH program, please get in touch with one of our attorneys.