The Global Patent Prosecution Highway – Global Protection on a Budget

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Patent prosecution can be a slow and expensive process.  A business or an applicant may wish to accelerate the process of procuring a patent for a number of reasons including, engaging in enforcement activity and reducing investor’s or licensee’s perceived risks.  A decisive factor for businesses and applicants seeking patent protection in key global markets is the cost involved in securing such protection.  The Global Patent Prosecution Highway (GPPH), that came into effect January 6th, 2014, is a new pilot program that offers to both expedite grant and significantly reduce overall global prosecution costs.  Under this program an applicant can request accelerated examination of its application in any of the participating offices on the basis that corresponding claims were found allowable or patentable in another participating office.  This program allows an Examiner in a participating office of later examination to rely on the search and examination carried out by a participating office of earlier examination.  The GPPH seeks to simplify and replace previous bi-lateral agreements executed under the Patent Prosecution Highway (PPH) with a single multilateral agreement between numerous countries.  This means that once a favorable outcome has been achieved in any one of the participating offices, acceleration under the GPPH will be available in any, or all, of the other participating offices, making it immaterial as to where the application was first filed and where it was first examined.  Currently, there are 17 participating patent offices, including the US Patent and Trademark Office (USPTO) and UK Intellectual Property Office (UK IPO).  The European Patent Office (EPO) and the Chinese Patent Office (SIPO) are among the notable omissions from the list of participating offices.  In order to be eligible for an accelerated examination under the GPPH, the applications involved must have the same earliest date, which may be the priority date or the filing date.  Further, the application must include at least one claim that was determined to be patentable or allowable during substantive examination by another participating patent office.  Finally, substantive examination of the application must have been requested, but not yet begun, in the office of later examination.  Both PCT and National applications are eligible for accelerated examination under the GPPH.  Under this program businesses and applicants can hope to see patent prosecution handled more efficiently across global markets, thereby reducing time and costs involved.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Topics:  Patent Litigation, Patent Prosecution Highway, Patents

Published In: Administrative Agency Updates, Intellectual Property Updates, International Trade Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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