Global Patent Prosecution Highway Pilot to Commence in 2014

On 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.

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Tags: Accelerated examination, Australia, Harmonisation, News, PPH

The Hazards of ‘Fast-Tracked’ Patents

Should patent offices issue patents within 18 months from their original date of filing?

The European Patent Office (EPO) recently declined to grant a patent, even though examination had identified no grounds of objection, because it was too soon to be confident that the patent would be valid.  The applicant appealed, claiming that there is no basis in the European Patent Convention (EPC) for the Office to delay the grant of a patent which is otherwise in-order.  The Board of Appeal upheld the decision, finding that the EPO is under no obligation to grant a patent until it is satisfied that a complete examination has been conducted.

I am unaware of any other patent office having a policy of not granting patents within 18 months of the original filing (i.e priority) date.  The Australian Patent Office will do so, and quite regularly examines and certifies innovation patents within this period.  The US Patent and Trademark Office (USPTO) will also do so, as I can attest from recent experience.

There is, however, a real question as to whether other patent offices should be following the EPO’s lead.

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Tags: Accelerated examination, Europe, International treaties, Prior art, Public policy, Publication, Validity

US Fast Track Examination Strategy 101

As many readers will be aware, the America Invents Act was signed into law on 16 September 2011.  While it will not take full effect – most notably replacing the first-to-invent priority rule with a first-inventor-to-file rule – until 16 March 2013, one provision that did come into effect almost immediately was a new prioritised examination procedure.

Prioritised examination – also known as Track One – is available for a fee at the time of filing an original utility or plant patent application, or as a once-only option when filing a Request for Continued Examination (RCE).  Further information about Track One can be found on the US Patent and Trademark Office (USPTO) web site.  The fee payable for entry into Track One is currently US$4800, or US$2400 for a ‘small entity’, which generally covers companies up to 500 employees, subject to some additional considerations (further details can be found in the USPTO Manual of Patent Examining Procedure, § 1.27, though if in doubt the advice of a US patent attorney or agent is strongly advised).

Since the Track One program commenced, we have recommended it to a number of our local Australian clients.  In a country where an annual turnover of A$20 million dollars qualifies a company for the ‘big end of town’, very few of our clients need to worry about large entity fees – and those that do can comfortably afford them.  With the Australian dollar currently trading above parity against the US dollar, we think that a fee of less than A$2400 to obtain a US search and examination within about three months, and possible final disposal of the application within 12 months, is something of a bargain.  The alternative – a two or three year wait for a first Office Action, followed by prosecution which might drag on for a year or more – carries costs of its own which can easily exceed the Track One fee.

We therefore considered ourselves very fortunate this week to exchange notes on Track One filing strategy with Michael Cammarata, who is a partner of the US firm Birch Stewart Kolasch Birch LLP, a.k.a. BSKB.  Avid consumers of IP blogs should recognise BSKB as a site-wide sponsor of Gene Quinn’s IP Watchdog blog (where, incidentally, we recently contributed a guest post on Apple’s strategic use of the Australian patent system).

Michael has kindly agreed to let Patentology share some of his considerable insight and experience with the Track One process – to date BSKB has filed about 50 prioritized examination requests.

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Tags: Accelerated examination, BSKB, Michael Cammarata, Strategy, US

USPTO Receives 850 Fast-Track Applications in First Week

We wrote recently about the passage of the US patent reform legislation (‘America Invents’), and its potential impact on non-US applicants (see US Patent Reform Passes, Simplifying Life for Foreign Applicants).

Among the many changes to US patent law brought about by America Invents is the introduction of prioritised examination of patent applications, also known as the ‘fast track’, or ‘track 1’.  The prospect of a multi-track examination process was first raised by USPTO Director David Kappos last year (see USPTO Multi-Track Examination Proposal & Non-US Applicants), in which applicants would be able to choose between ‘normal’ examination (‘track 2’), delayed examination (‘track 3’) and – upon payment of a suitable fee – prioritised examination (‘track 1’).

In fact, fast-track examination almost went into effect earlier this year, but was abandoned when it became apparent that there was no guarantee that the USPTO would be able to keep the corresponding additional fees necessary to fund the program.

However, with the passage of America Invents, fast-track examination has been implemented, and as of 26 September 2011 is available to all new applications.

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Tags: Accelerated examination, Law reform, Patent law, US

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.

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Tags: Accelerated examination, Australia, News, US

More on Fast-Track Examination

A survey is being conducted over on the Patently-O blog on the prospective popularity of the USPTO's proposed "fast-track" examination process. We look forward to the results with some interest, particularly with regard to the likely utilisation of such a system by domestic (ie US-based) applicants.  Patentology has already considered the possible issues for foreign applicants in this earlier article.

The Patently-O survey asks, among other things, about the price-point, in terms of official fees, at which fast-track examination might be an attractive option.  The subtext appears to be that if the fee were set too low, a large proportion of applicants might request prioritised examination, such that the priority queue would become, in effect, the same thing as the current standard examination queue, such that little improvement in examination time could be achieved.

Patentology is not convinced, however, that the setting of the fee is a major issue.  As we have previously noted, many jurisdictions already provide applicants with substantial control over the pace of examination.  Just north of the US border in Canada, for example, applicants can delay requesting commencement of examination until up to five years from the original filing date.  In Australia, a similar five-year deadline also applies, with the difference that the Commissioner of Patents can issue an Official Direction at an earlier date, requiring the applicant to request examination within six months.  Examination Directions are presently issuing no earlier than around three to four years after the priority date, with the delay being longer in around half of all cases.

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Tags: Accelerated examination, Australia, Europe, US