Enforcing your patent sooner: Considerations on the way to the Patent Prosecution Highway

If you are seeking patent protection and need to get your patent examined through a specific intellectual property office quickly, one possible option available is the Global Patent Prosecution Highway (GPPH), an initiative to which Australia is a participating intellectual property office.  

What is the GPPH? 

The GPPH is an agreement between member patent offices around the world that can speed up the examination process for corresponding applications filed in participating patent offices. 

Under the GPPH, an Applicant who receives a favourable ruling on at least one claim in one member patent office may request that examination of a corresponding application be accelerated in another member patent office/jurisdiction. The GPPH allows Applicants to obtain a granted patent faster than ordinary examination. 

What countries are part of the GPPH agreement? 

Member countries of the GPPH include the Patent Offices of Austria (AT), Australia (AU), Canada (CA), Chile (CL), Colombia (CO), Germany (DE), Denmark (DK), Estonia (EE), Spain (ES), Finland (FI), United Kingdom (GB), Hungary (HU), Israel (IL), Iceland (IS), Japan (JP), South Korea (KR), Norway (NO), New Zealand (NZ), Peru (PE), Poland (PL), Portugal (PT), Russia (RU), Sweden (SE), Singapore (SG), and United States of America (US). 

Considerations when using the GPPH 

It should be noted that claims that have been deemed to be novel and inventive (allowable) during the international phase (PCT) can also form the basis of a GPPH request. As such, it may be cost effective to file and request examination on an Australian national phase application through the GPPH when a clear International Preliminary Report on Patentability is obtained . This may result in a granted Australian patent prior to further Examination Reports and/or objections being raised. From our experience, Australian Examiners do give considerable regard to the prosecution of corresponding patent applications. 

The claim under examination must correspond to allowed claims in another member jurisdiction. Variation may be allowed where the drafting style and interpretation of the claims are different between jurisdictions. The important thing to note is that the claims should have a similar (or narrower) scope as the allowed claims of another jurisdiction. 

Please do not hesitate to contact Michael Buck IP if you require any information or guidance regarding the Global Patent Prosecution Highway and other possible strategies for expedition. 

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