By Tim Jackson, Dr Tim Stirrup, and Tomas Ribeiro
IP Australia recently announced it had joined the Global Patent Prosecution Highway (GPPH) pilot programme. The GPPH is a multilateral agreement between thirteen Patent Offices that will provide patent applicants with an option to accelerate patent examination in one participating Patent Office based on a favourable examination outcome in any of the other Offices. The overall aim of the programme is to reduce patent pendency (i.e. the time from application to grant) and to increase efficiencies between Patent Offices by relying on the search and examination carried out by other offices.
There are a number of reasons that an applicant may wish to accelerate examination. Firstly, earlier examination provides information on the novelty and inventiveness of the invention which is a good guide to the likely scope of protection that will be granted in other jurisdictions. This assists with development of IP/commercialisation strategy and reduces perceived risk by investors.
Secondly, earlier examination potentially equals earlier grant which has the advantage of enabling the patentee to license/sell/enforce their patent. Additionally, the asset value associated with the granted patent can be used to garner further investment or support.
The GPPH pilot commences on 6 January 2014 and the participating Patent Offices are:
- IP Australia
- Canadian Intellectual Property Office
- Danish Patent and Trademark Office
- National Board of Patents and Registration of Finland
- Japan Patent Office
- Korean Intellectual Property Office
- Nordic Patent Institute (covers Denmark, Iceland and Norway)
- Norwegian Industrial Property Office
- Portuguese Institute of Industrial Property
- Russian Federal Service for Intellectual Property
- Spanish Patent and Trademark Office
- United Kingdom Intellectual Property Office
- United States Patent and Trademark Office
For these states, the GPPH aims to replace the current Patent Prosecution Highway (PPH) system, which is made up of a number of bilateral agreements between Patent Offices. The first PPH bilateral agreement between the United States Patent and Trademarks Office and the Japanese Patent Office commenced in 2006. Since then, numerous other bilateral PPH agreements have come into effect, resulting in greater efficiencies for Patent Offices and for applicants.
Is New Zealand in the slow lane?
The Intellectual Property Office of New Zealand (IPONZ) is a notable absentee from the GPPH. IPONZ is not currently party to any PPH agreements and there has been no word from the New Zealand Government on whether IPONZ will join the GPPH in the future. Consequently, it will not be possible to accelerate examination at IPONZ based on favourable examination elsewhere in the world. It is, however, worth noting that New Zealand patent examiners often look at corresponding overseas applications when examining the equivalent application in New Zealand. Allowance in Europe, the US, or Australia, for example, is often persuasive.
IPONZ is also efficient in processing applications and does not have significant delays in patent examination compared to other countries. Convention applications are examined within 15 working days of filing. Depending on the technology, national phase applications are examined 8 to 20 months from the 31 month deadline for entering the New Zealand national phase. Examination correspondence is examined within 15 working days of receipt.
Accelerated examination may also be requested in New Zealand for "good and substantial reasons", for example if infringement is suspected.
There are a number of notable absentees from the GPPH including the Korean Intellectual Property Office (KIPO) and the European Patent Office (EPO). We wait with interest to see if KIPO and the EPO join the GPPH in the future.
Will New Zealand Patent applicants be able to hitch a ride on Australian applications?
While it remains to be seen whether IPONZ will join the GPPH, the New Zealand Government recently announced that IP Australia and IPONZ will introduce a single patent application and examination process.
If a patent application is filed into Australia and New Zealand, a single examiner will examine each application based on the laws of each country. Using this system may accelerate examination in New Zealand by default. For example, if an applicant files a patent application into both Australia and New Zealand and requests accelerated examination of the Australian application through the GPPH, it is hard to imagine that the examiner will not also examine the New Zealand application at the same time.
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