16 November 2013

Global Patent Prosecution Highway Pilot to Commence in 2014

HighwayOn 1 November 2013 IP Australia, along with the patent offices of twelve other countries, announced the commencement of a Global Patent Prosecution Highway (GPPH) pilot.  This program will simplify the process for accelerating examination in any of the 13 participating offices based upon a favourable examination outcome in any other one of the offices.

The GPPH will commence operation on 6 January 2014.

The Patent Prosecution Highway (PPH) pilot program was originally established to enable an applicant whose claims were found to be allowable by the first patent office in which an application was filed – the ‘Office of First Filing’ (OFF) – to have examination of a corresponding application accelerated in the ‘Office of Second Filing’ (OSF).  In exchange for examining the application out-of-turn, the OSF has access to the results of search and examination in the OFF.

In effect, the PPH was conceived as a mechanism to encourage work sharing among patent offices with sufficient faith in the quality of one another’s work.  Thirty patent offices now participate, to varying degrees, in a range of bilateral PPH arrangements.  Of these, IP Australia is one of the less-involved authorities, having ongoing PPH agreements only with the USPTO.  However, that will change dramatically once the GPPH pilot is underway, giving Australian applicants access to accelerated examination in the US, Japan, Norway, Portugal, Spain, Russia, Finland, Denmark, Canada, the UK, Korea and the Nordic Patent Institute.

Origins of the PPH

The very first PPH pilot, between the US Patent and Trademarks Office (USPTO) and the Japanese Patent Office (JPO), commenced on 3 July 2006 (original announcement [PDF 355kB]).  It was originally proposed to run for one year, with the possibility of an extension for a further year if necessary to ‘adequately assess the feasibility of the PPH program.’  It was also suggested that it could have been terminated early ‘if the volume of participation exceeds manageable levels.’ 

However, not only has the original pilot program never been terminated, it has spawned numerous further pilots between various national patent offices, not all of which involve either the USPTO or the JPO.  Here (courtesy of the JPO’s rather 1990’s-design Patent Prosecution Highway Portal site) is a diagram of the state of the world’s PPH arrangements as at 7 October 2013:
PPH Programs - October 2013
Australia entered into a PPH arrangement with the US with effect from 14 April 2008.

Extensions of the PPH

In addition to the original PPH program, the PPH MOTTAINAI (a Japanese word meaning ‘a sense of regret concerning waste when the intrinsic value of an object or resource is not properly utilised’) relaxes the requirement that examination must occur in the OFF before a PPH request can be made in the OSF.  Instead, a PPH request can be made in an office of later examination (OLE) based on the outcome in an office of earlier examination (OEE), i.e. under the PPH MOTTAINAI it does not matter which application is filed first or examined first, a PPH request can always then be made in the other office(s).

Many offices have also entered into PCT-PPH agreements, under which a PPH request can be made on the basis of a partly or wholly favourable International Search Opinion, or International Preliminary Report on Patentability, issued on an international application filed under the Patent Cooperation Treaty.

The GPPH

The new GPPH will further simplify the PPH programs by replacing (and extending) a number of bilateral agreements with a single multilateral agreement.  Here is how the JPO depicts the GPPH scheme:
GPPH
The GPPH pilot will operate according to the MOTTAINAI principles, i.e. it will not matter where an application is first filed, or where it is first examined.  Once a favourable outcome has been achieved in any one of the participating offices, acceleration under the GPPH will be available in any, or all, of the other offices.  All of the GPPH offices will also recognise the work product of the other participating offices (where applicable) in their capacity as International Search and/or Examining Authorities under the PCT.

Comment

I have utilised the existing IPAU/USPTO PPH and PCT-PPH programs on behalf of clients on a number of occasions.  In all of these cases, IP Australia has been the OFF, and the USPTO the OSF.  In general, I have found this to significantly accelerate commencement of examination in the USPTO.  However, it has not always resulted in a more straightforward prosecution of the US application. 

In my experience, US examiners conduct substantial additional searching – particularly, it would seem, of US patent documents.  To some extent, this is always necessary because there can be earlier relevant US applications, which were unpublished at the priority date of the application, and which are therefore prior art in the US, but unavailable in Australia.  In practice, US examiners do not necessarily limit the scope of their further searching to this particular ‘blind spot’ in the Australian search.

Additionally, US examiners have, in the past, been applying a law of obviousness which sets a higher bar for the applicant than under Australian law.

As a result, there have been a number of occasions on which achieving acceptance of claims in Australia did not result in rapid allowance of the same claims in the corresponding US case.

With the commencement of the Raising the Bar patent law reforms in Australia, and the America Invents Act in the US, earlier this year, the substantive patent laws of the two countries are more closely harmonised.  This same consideration also applies, in varying degrees, to the other 11 participants in the GPPH pilot.  However, complete harmonisation of laws and examination practices across multiple global patent offices remains a distant dream!  Indeed, this may not even be desirable, since – within the parameters of the various international treaties to which participating countries have signed-up – every nation has the right to set the detailed requirements of its own patent laws according to its specific policy objectives.

Further harmonisation will result in greater efficiencies – for applicants and patent offices – through mechanisms such as the GPPH.  But, for the foreseeable future at least, the GPPH pilot program moves us only marginally closer to the ideal of a single, worldwide, search and examination process.

For Australian applicants, however, the GPPH greatly expands the scope for achieving fast and more efficient processing of applications in a number of other jurisdictions.

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