Expanding the PPH in Australia

Date: 2015-10-20

A Memorandum of Understanding (MoU) has paved the way for the European Patent Office (EPO) to partner with the Australian Patent Office in a Patent Prosecution Highway (PPH) pilot program.

The PPH program has been in use for several years now to speed up the patent examination process in Australia and a number of major jurisdictions, including the United States and Japan (a full list of participating offices can be found on the IP Australia website).

As discussed in our earlier article on the PPH (which can be accessed here), under this program, an applicant for an Australian patent application (that has not yet commenced examination) can request expedited examination on the basis that at least one claim in a corresponding application has been allowed, or indicated as allowable, by a patent examiner in other participating countries of the program. Therefore, for example, an applicant for an Australian patent application who has obtained allowance of a corresponding patent application in the US is able to request PPH examination in Australia on the basis of the patent claims allowed in the US. PPH can also be requested on the basis of a clear international search report and preliminary opinion on patentability on a PCT patent application.

The EPO has not, to date, been a participant in the Australian PPH pilot program, but last week a MoU was signed by representatives of the European and Australian Patent Offices. One feature of this agreement is the establishment of a PPH pilot program between the two offices. The program is not yet in place, with an expected launch date around mid-2016.

Benefits of the PPH

To date, the process of requesting examination via the PPH has been quite straightforward and the paperwork relatively minimal. We are finding that IP Australia examines the applications within two to three months and in most cases promptly allows them.

The PPH program can be used in reverse by Australian applicants to gain speedier examination of their foreign applications. Where by voluntary examination early acceptance/allowance is obtained in Australia, a PPH request can be filed in a participating office to move examination of the foreign application up the queue.  European applications are not often allowed before Australian applications are examined. However one benefit of the EPO being a member of the PPH program may be that this “reverse” PPH examination can be used to achieve faster examination and allowance in Europe.