Expedited examination under the GPPH in Australia

When is GPPH available?

An applicant can ask for expedited examination of a standard Australian patent application under the GPPH:

  1. when examination of a corresponding overseas or PCT application has been performed by one of the participating offices; and 
  2. where that participating office has found at least one claim to be allowable. 

A request to examine under GPPH is usually made when requesting examination, but can be made any time before the first examination report issues.

Which patent offices are participating in GPPH?

The participating offices are:

  • Austrian Patent Office;
  • Canadian Intellectual Property Office;
  • Colombian, Superintendency of Industry and Commerce;
  • Danish Patent and Trademark Office;
  • Estonian Patent Office;
  • Finnish Patent and Registration Office;
  • German Patent and Trade Mark Office;
  • Hungarian Intellectual Property Office;
  • Icelandic Intellectual Property Office;
  • Intellectual Property Office of New Zealand;
  • Israel Patent Office;
  • Japan Patent Office;
  • Korean Intellectual Property Office;
  • National Institute for the Defense of Competition and the Protection of Intellectual Property of Peru;
  • Nordic Patent Institute;
  • Norwegian Industrial Property Office;
  • Patent Office of the Republic of Poland
  • Portuguese Institute of Industrial Property;
  • Russian Federal Service for Intellectual Property;
  • Intellectual Property Office of Singapore;
  • Spanish Patent and Trademark Office;
  • Swedish Patent and Registration Office;
  • United Kingdom Intellectual Property Office; 
  • United States Patent and Trademark Office; and 
  • Visegrad Patent Institute.

Do the claims need to be amended?

For examination under the GPPH, the claims of the Australian application must ‘sufficiently correspond’ to one or more of the claims considered to be allowable by the participating office. This means that the Australian claims must be of the same, similar, or narrower scope as the allowable claim(s). Amendments to meet this requirement can be made when requesting examination under the GPPH.

What documents must be provided?

When requesting GPPH, the following documents are needed:

  • a copy of the examination report which indicates the allowability of the claim(s);
  • a copy of the claims examined by the examiner for that report;
  • an indication of the relationship between the Australian claims and the allowed claim(s); and
  • a verified English translation of the relevant documents if they are not originally in English.

Where the participating patent office provides electronic access to, and machine translations of, the required documents, details of these documents (document description and date) can be provided to the Patent Office instead of providing copies of the documents. Patent Offices which routinely provide these electronic services are:

  • Danish Patent and Trademark Office;
  • Japan Patent Office;
  • Korean Intellectual Property Office;
  • Norwegian Industrial Property Office;
  • United Kingdom Intellectual Property Office;
  • United States Patent and Trademark Office; and
  • World Intellectual Property Office.

However, where the machine translations are poor, a verified translation may be requested by the Australian examiner.