The Global Patent Prosecution Highway (GPPH) pilot program is a multilateral agreement between thirteen national Patent Offices that will provide patent applicants with an option to accelerate patent examination in one participating Patent Office based on sufficiently corresponding allowable claims in any of the other participating patent offices.
The GPPH pilot commences on January 6, 2014. The overall aim of the program is to reduce patent application pendency and to increase efficiencies between Patent Offices. This is primarily accomplished by the Examiner in the second patent office relying on the search and examination carried out by the first patent office. This program is a welcome option for start-ups and small businesses.
There are a number of business reasons that an applicant may wish to accelerate patent examination: IP/commercialization strategy, enforcement activity and reduction of perceived risk by investors or licensees.
GPPH aims to replace the current Patent Prosecution Highway (PPH) system which is made up of a number of bilateral (two-party reciprocal) agreements between Patent Offices. The multilateral agreement essentially is a 13-way agreement. All new signatories will be contracting with all other members. This decreases the politics and complexity of this global patent cooperation initiative.
There are a number of notable nonparticipants in the GPPH including the Japanese Intellectual Property Office (JPO) and the European Patent Office (EPO). This can be limiting since these are two of the five most used international search and examination authorities. The other three are participating: The Unites States, China and Korea. After the program gains “street credibility,” these regional patent offices are likely to join. In the interim, the Japanese and European patent offices do have some bilateral PPH agreements that can still be a vehicle for accelerating examination.
Australia joins the Global Patent Prosecution Highway effective January 6, 2014
Patent prosecution can be a slow and expensive process. This is multiplied if patent coverage is sought in several countries (or regions like EPO). To address this issue, thirteen countries’ patent offices have joined together to form the Global Patent Prosecution Highway (GPPH). The United States participates in both PPH and GPPH.
What is the GPPH?
Under the GPPH, an applicant with an allowable claim in one of the participating GPPH member countries can fast track examination of their corresponding application in another member country.
At present, the other national patent offices participating in the GPPH (in addition to the United States) are:
Australia
Norway, Denmark and Iceland (Nordic Patent Institute, Norwegian IPO and Danish IPO)
Canada
Portugal
Denmark
Russia
Finland
Spain
Japan
United Kingdom
Korea
While each national or regional patent office that examines a case under the provisions of the GPPH will independently examine the case on its merits, it is anticipated that examination under GPPH will not only expedite grant, it will also reduce prosecution costs. Each patent office has the option of relying on the search and examination of their colleague in another participating patent office.
Under the new arrangements, you will be able to use the GPPH program to expedite prosecution of your patent application in participating countries based on the allowance of patent claims in your Australian application. You will also be able to speed up prosecution of your Australian patent application if you have allowed sufficiently corresponding claims in another GPPH country. This would accelerate the patent grant in all participating GPPH patent offices and significantly reduce overall global prosecution costs. To benefit from the GPPH program, examination in the country where GPPH acceleration is sought must not have started. However, it is still unclear at this stage whether individual offices may still allow accelerated processing once examination has commenced.