The global marketplace has prompted businesses to focus on securing intellectual property rights across various jurisdictions, particularly through patent protection, but the traditional process of patent prosecution can be lengthy and cumbersome, often delaying a business’s ability to enforce its intellectual property. To overcome this challenge, many patent offices worldwide have introduced the Patent Prosecution Highway (PPH), which allows for the expedited processing of patent applications by leveraging the work already conducted by other patent offices.

I. What is the Patent Prosecution Highway?

The Patent Prosecution Highway is a collaborative initiative that enables participating patent offices to fast-track the examination of patent applications. When an applicant’s claims have been found patentable in one jurisdiction, this assessment can be used to request accelerated examination in another participating jurisdiction. This avoids the need for duplicate examination work, speeding up the process of obtaining a patent in multiple regions.

The IP Australia-EPO PPH is a specific agreement between IP Australia and the European Patent Office. It aims to facilitate faster patent prosecution by allowing applicants to leverage the examination results from one office to expedite the examination in the other. This not only reduces the time to obtain a patent but also improves the overall efficiency of the patent prosecution process.

II. How the IP Australia-EPO PPH Works?

The IP Australia-EPO PPH allows applicants to request expedited examination for their Australian (AU) patent application when a corresponding application has already been examined by the European Patent Office and applicants are specifically eligible to use the program when at least one claim in the corresponding EPO application has been found to be patentable or allowable.

The program covers both Patent Cooperation Treaty (PCT) and Paris Route applications, offering flexibility for applicants who pursue different international patenting strategies and if the EPO has examined and allowed at least one claim in the corresponding patent application, the applicant can request that IP Australia fast-track the examination of the Australian application.

III. Key Terminologies

Before delving into the specific requirements and processes, it is essential to clarify two important terms within the context of the IP Australia-EPO PPH–

Office of Earlier Examination (OEE)–

In this context, the EPO serves as the Office of Earlier Examination, including in its roles as the International Search Authority (ISA) or the International Preliminary Examination Authority (IPEA). This means that the EPO’s findings during international patent searches or preliminary examinations can be used to support a PPH request.

Office of Later Examination (OLE)–

IP Australia acts as the Office of Later Examination, where applicants request accelerated prosecution based on the EPO’s earlier findings.

IV. Eligibility Requirements for the IP Australia-EPO PPH Program

To participate in the IP Australia-EPO PPH, the applicant must meet several important criteria-

Corresponding Applications with a Common Earliest Date

The Australian application must have the same earliest date (priority or filing date) as the corresponding EPO application. The two applications must be connected in one of the following ways-

  1. The Australian application claims priority from the EPO application.
  2. Both applications are based on the same PCT application.
  3. Both applications claim priority from a common priority document filed in any jurisdiction.
  4. The Australian application serves as the priority document for the EPO application.
  5. The Australian application is a divisional of an application that meets any of the above conditions.

Allowable Claims in the EPO Application

The corresponding EPO application must include at least one claim that has been deemed patentable or allowable by the EPO. These claims must be novel, inventive, and industrially applicable, as determined by the EPO in its capacity as the ISA, IPEA, or as a national office.

Corresponding Claims in the Australian Application

The claims in the Australian application must “sufficiently correspond” to the patentable claims in the EPO application. This means that the claims in the Australian application should either have the same or a similar scope as the EPO claims or be narrower in scope. Introducing new claim categories that differ from those in the EPO application would generally disqualify the application from the PPH program.

Request for Examination

The applicant must file a request for examination with IP Australia. This can be done either before or at the time of requesting participation in the PPH program. Such substantive examination of the Australian application should not have already begun.

V. Required Documents for Participation

To participate in the IP Australia-EPO PPH, the applicant must submit several documents-

  1. Request for Participation– A formal request for expedited examination under the PPH program.
  2. Claims Correspondence– A statement indicating that the claims in the Australian application correspond to the allowable claims in the EPO application.
  3. Office Actions or Work Product– Copies of the office actions or work product from the EPO, which outline the patentable claims and support the request for PPH participation.
  4. Patentable Claims– Copies of the claims deemed allowable by the EPO, along with English translations where necessary.

VI. Benefits of the IP Australia-EPO PPH Program

Participation in the PPH program offers several significant benefits to applicants-

  1. Faster Patent Examination– By leveraging the work already done by the EPO, IP Australia can accelerate the examination process, reducing the time it takes to obtain a patent.
  2. Increased Efficiency– Applicants can avoid redundant examination processes, as IP Australia relies on the prior work conducted by the EPO.
  3. Cost Savings– Although there are no additional fees for requesting PPH participation, the time and effort saved through expedited examination can result in substantial cost savings for applicants, especially those seeking patent protection in multiple jurisdictions.

VII. Filing the Request for Participation

It is crucial that all subsequent correspondence with IP Australia clearly identifies the application as part of the IP Australia-EPO PPH program to ensure proper handling. The request for expedited examination must either be accompanied by a request for standard examination or filed separately beforehand, and there are no additional fees for expedited examination under the PPH program, making it an attractive option for applicants.

VIII. Conclusion

The Patent Prosecution Highway represents an innovative and efficient approach to patent prosecution, allowing applicants to expedite the examination process by leveraging the work already performed by other patent offices. The IP Australia-EPO PPH streamlines the patent process for applicants seeking protection in both Australia and Europe, offering significant time and cost savings and by meeting the eligibility criteria, submitting the required documentation, the applicants can benefit from faster examination times, ensuring that their intellectual property rights are secured more quickly and effectively.

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Together, we can safeguard and enhance the value of your innovations. Our dedicated team of Patent Attorney Australia, and Trademark Attorney Australia specialists can provide expert guidance and support, helping you navigate the complexities of intellectual property law in Australia, New Zealand, India, and beyond.

 

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