The Patent Prosecution Highway (PPH) – high speed examination of Australian and United States patent applications

by FPA Patent Attorneys
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[author: Greg Noonan]

The Patent Prosecution Highway (PPH) has been in use for several years now and can be used to speed up the patent examination process in both Australia and the United States.

Conventional “expedited” examination

Even when an applicant for an Australian patent application files an early voluntary request for examination the typical wait for an examination report is around one year. In some areas of technology the delay is again approaching two years. IP Australia will act to expedite examination at the request of the applicant in particular circumstances including actual or apprehended infringement and the subject of the patent application being “green” technology. Such requests typically result in an examination report within four to six weeks.

The process of PPH in Australia

There is a more general approach available which is proving quite effective though not yet widely used. Australia is a party to an inter-patent office program known as the Patent Prosecution Highway (PPH) Pilot Program. Under this program, an applicant for an Australian patent application can request expedited examination on the basis that corresponding claims have been allowed, or indicated as allowable, by a patent examiner in other participating countries of the program. Thus, for example, an applicant for an Australian patent application who has obtained allowance of a corresponding patent application in the United States can request PPH examination in Australia on the basis of the patent claims allowed in the United States.

PPH can also be requested on the basis of a clear international search report and preliminary opinion on patentability on a PCT patent application.

The process is quite straightforward and the paperwork relatively minimal. We are finding that IP Australia examines the applications within a few weeks and in most cases promptly allows them.

PPH vs Modified Examination

With the abolition of modified examination in April 2013, PPH examination is likely to become more popular. Relative to modified examination, PPH examination has two significant advantages and one disadvantage.

The advantages are the much speedier processing by IP Australia and the removal of the requirement to bring the Australian specification into exact conformity with the corresponding foreign granted patent: this resulted in undesirable textural outcomes in some cases that required rectification after acceptance.

The disadvantage is that, if a foreign patent application was granted with multiple independent claims that in Australia would be viewed as multiple inventions, the examiner could not object to this under modified examination, whereas under PPH such an objection can be raised by the Australian examiner. A granted patent can only contain one invention under Australian law. Despite the tests for determining whether there are one or more inventions being nominally the same in the United States and Australia, it is still quite common for US patents to be granted with claims to multiple inventions. Thus PPH examination based on a US patent allowance or grant will not avoid division of the Australian patent application in some cases.

PPH in the US based on an early allowance of an Australian patent application

As a footnote, the PPH program can be used in reverse by Australian applicants to gain speedier examination of their US applications. Where by voluntary examination early acceptance/allowance is obtained in Australia, a PPH request can be filed in the US to move examination of the US application up the queue. As a means of expedition, this certainly works but we are not expecting US examiners to be so ready to grant US applications simply because the Australian counterpart has been allowed!

 

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