The Australian approach to the Patent Prosecution Highway

Whilst the details of the process vary from jurisdiction to jurisdiction, the intention is to provide applicants with a means of efficiently advancing prosecution of corresponding applications in participating parties. At the heart of the process, from a patent office perspective, is the ability to reduce duplication of work. This requires the reliance on the work product of other participants. Effectively, this reduces the resources that a patent office requires to examine applications which have already been examined overseas.

Australia’s place in the PPH world

IP Australia became an early participant in the PPH process. Following a successful pilot program with the USPTO, which commenced on 14 April 2008, Australia joined the Global PPH (GPPH). The GPPH initially covered Canada, US, Japan, South Korea, Denmark, Finland, Great Britain, Iceland, Norway, Portugal, Spain and Russia. Subsequently, the New Zealand jurisdiction was added, along with a raft of other particpants.

Although the European Patent Office (EPO) is notably absent from the list of GPPH participants, fortuitously, IP Australia entered into a bilateral agreement with the EPO on 1 July 2016 in order to fast-track patent applications. This agreement provided for a trial period of three years. Given the global significance of the EPO, this was a very welcome and positive development.

The process in practice

To expedite examination via the GPPH or the EPO-IP Australia bilateral agreement, an Applicant needs to meet the following requirements:

1. An Australian standard patent application must be associated with a foreign or PCT application which has been examined by the EPO or GPPH participant. At least one claim in the examined application must have been allowed.
2. The Australian claims must “sufficiently correspond” or be amended to “sufficiently correspond” to at least one of the allowed claims. To account for the different approaches to claim construction adopted by various patent offices, there is some flexibility as to the type of allowable amendments.
3. The request for expedited examination must be made before the first Australian examination report has been issued - ideally at the time a request for normal examination is filed.

Considerations of the PPH process

It is evident that compliance with the aforementioned requirements is relatively minimal. Moreover, once the 'at least one claim allowable' criterion is met, an applicant is free to amend the claim set as desired. Naturally any such claim amendment must be supported by the description.

How the claims may be amended ought to be determined on a case-by-case basis. Nevertheless, we recommend a review of the language of all claims to ensure compliance with Australian practice. This should occur even if all of the claims are allowable. Formal amendments, such as the introduction of multiply dependant claims, should also be undertaken. It may also be appropriate to introduce further independent claim categories. The purpose of the review is to minimise objections to improve the efficiency of prosecution and obtain the best scope of protection.

Once an application is found by IP Australia to be formally compliant, an official action will issue usually within one month. These are prosecuted in the usual way, that is, an applicant is provided with a 12 month period to overcome any objections and obtain acceptance (allowance) of an application.

Our experience

Greater than 95% of applications are found to have allowable claims at the first official action stage. Indeed, for those cases where the claims have been reviewed and amended, it is usual to obtain allowance of all claims at the first official action stage. As will be appreciated, this is a very efficient process and one that is highly cost-effective.

The future

On 1 July 2019 it was announced that the PPH trial between IP Australia and the EPO would continue for a further three years. Additionally, the original GPPH program with the other participant IP offices continues with no indication of curtailment.

This is indeed very good news as applicants will continue to be able to access and gain the benefits of the generous PPH programs operated by IP Australia.