New Year; New Patent Options

The New Year will bring us two new options for accelerating progress of patent applications in a variety of countries.

The five largest patent offices, known as the IP5, are launching a new IP5 Patent Prosecution Highway (IP5 PPH) in January 2014.  The IP5 offices are the European Patent Office, the Japanese Patent Office, the Korean Intellectual Property Office, the State Intellectual Property Office of the People’s Republic of China and the United States Patent and Trademark Office.  Full details of the IP5 PPH have not been announced yet, but it should launch in January 2014.

The program will enable an applicant to request accelerated examination of an application in one of the IP5 offices based on claims found to be patentable by one of the other IP5 offices or on the basis of a PCT opinion.

A new pilot Global Patent Prosecution Highway (GPPH) has also been announced, which is also due to commence in January 2014 and which covers 13 patent offices.  Click [ HERE ] to learn more about GPPH.

When would the GPPH or the IP5 PPH be useful?  When the scope of protection offered by the office of earlier examination is broad or where the allowed claims cover an infringing product and there is a  desire to swiftly obtain a granted patent that can be enforced against that product.  Accelerated examination would not be useful if claim scope was narrowed or where the restrictions that were made are specific to those individual country or regional requirements.

Whilst the IP5 PPH and the GPPH schemes may not be suitable for every foreign patent applicant, they will certainly add further options for acceleration of patent applications and will hopefully reduce the complexity and cost of obtaining foreign patent protection.

Previous PPH agreements have required the offices to accelerate examination of an application when PPH is requested, but each office has remained able to examine the claims and so acceptance of the claims as granted in one of the other participating offices is not guaranteed.  It will be interesting to see the degree of further examination carried out by the national offices after acceleration has been requested.