18 January 2011

Australia-US Patent Prosecution Highway Extended and Expanded

IP Australia announced today that the Patent Prosecution Highway (PPH) trial between the Australian Patent Office and the US Patent and Trademark Office (USPTO), which  commenced on 14 April 2008, will once again be extended – until 13 April 2012 – and will now be expanded to include search and examination work carried out under the Patent Cooperation Treaty (PCT).

The PPH is an initiative of the USPTO, now in-place with a number of national and regional patent offices around the world, whereby an applicant may request accelerated examination in one office (e.g. the USPTO) based on a determination by the other office (e.g. the Australian Patent Office) that at least one claim of a corresponding application is allowable.

Expansion to include PCT work product, i.e. a ‘PCT-PPH’ pilot, means that a favourable outcome of an International Search and Written Opinion issued by one office may also be used as a basis for accelerated examination in the other.

The IP Australia Official Notice can be found here.


It is our view that, in its present form at least, the Australia-US PPH favours Australian applicants over their US counterparts.  The Australian Patent Office currently allows applicants to request expedited examination without the need to provide substantive reasons, and without payment of any additional official fee.  An examination report generally issues in an expedited case within three months.  Furthermore, it is standard practice for Australian examiners to identify and review the prosecution history of any corresponding US and/or European cases.

Therefore, when the USPTO is the office of first filing, it would be possible to obtain the full effect of the PPH program in a corresponding Australian case, even if the program did not exist!

Going the other way, however, the ability to use the outcome of examination in Australia as a basis for accelerated examination in the US may be highly beneficial, considering that other grounds for acceleration (known as ‘making special’ by the USPTO) are difficult to satisfy, and/or involve the applicant making potentially prejudicial statements or admissions in relation to the application.

Furthermore, since examination may be requested and expedited at filing in Australia, resulting in acceptance of the application within as little as three months, it is at least theoretically possible to proceed from filing of an Australian priority application, to allowance of a corresponding US case, in around a year.  We are, in fact, aware of at least one case in which this actually occurred.

Presumably the USPTO and IP Australia are monitoring the pilot to assess its value, and this further extension and expansion implies that they are happy with the progress to date.

We would encourage all Australian applicants for whom the early grant of a US patent may have commercial or strategic value to carefully consider use of the PPH program.


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