How to Patent Your Invention in Australia and the US

For many of the Australian clients I work with, the most important markets are Australia (i.e. the ‘home’ market) and the US (because of its size and relative accessibility).  This means that when it comes to protecting their innovative technologies, obtaining patents in these two countries is at the top of these clients’ lists of priorities.  I am therefore often asked how best to achieve this objective, how much it will cost, and how long it will take.

The typical ‘lawyer’ answer is, of course, ‘it depends’!  Do you want patents only in Australia and the US, or are there other countries of interest?  When and why do you require these patents?  Do you want to obtain patents as quickly as possible, or are there strategic advantages in drawing out the pendency (and finalisation of the scope of rights) for as long as possible?  What is your budget for the patenting program, both in the short term and over the coming years?

Assuming that you are able to answer these questions, it should be possible to develop a strategy that meets all of your requirements.  In this article I will go into further detail of one fairly typical and effective approach, along with some of the relevant considerations and potential variations.

 Read full article ► 

Tags: Australia, Examination, Paris Convention, Patent filing, PCT, PPH, Strategy, US

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.

 Read full article ► 

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