Patent Prosecution Highway gets on the road in Australia

IP Australia and the US Patent and Trademark Office (UPSTO) have announced the launch later this month of a new trial cooperation initiative between Australia and the United States, in line with the existing Patent Prosecution Highway (PPH) model. This announcement follows on from successful PPH pilot agreements between the UK Intellectual Property Office, the USPTO and the Japan Patent Office.

Under the new trial system, an applicant receiving an examination report from either IP Australia or the USPTO with at least one patentable claim may request that the other office accelerate the examination of the corresponding application. The pilot programme will be trialled for one year to gauge the interest of patent applicants; it may be extended for a further one-year period.

The IP Australia requirements for requesting accelerated examination under the new pilot programme can be summarised as follows: 

• The Australian application is a standard complete application and is either:
  • a nationally filed application which validly claims priority under the Paris Convention from either a single USPTO national application or multiple USPTO applications;
  • a Patent Cooperation Treaty (PCT) national phase application, where the PCT international application has validly claimed priority from a USPTO national application or multiple USPTO national applications;
  • a PCT national phase application (with a corresponding PCT national phase application in the United States), where the PCT international application has no priority claims; or
  • a divisional or an application referred to in any of the abovementioned.
• There is at least one corresponding USPTO application which has one or more claims that USPTO has determined to be allowable.
• All claims in the standard patent application subject to accelerated examination sufficiently correspond, or are amended to sufficiently correspond, to one or more of those claims indicated as allowable by the USPTO, or are dependent or fall within the scope of such a claim.
• IP Australia has not issued a first examination report on the application.

It is hoped that this pilot programme will significantly reduce pendency times and help to  raise further the efficiency and quality of patent examination in both the United States and Australia.