Patent Prosecution Highway (PPH) – pilot program between Australia and USA

A Patent Prosecution Highway (PPH) pilot program between IP Australia and the USPTO commenced on 14 April 2008. The pilot program will run for one year and may be extended if successful or terminated early if found to be unviable.

The PPH is a bilateral initiative familiar to US patent practitioners, whereby an application determined to be allowable/patentable in one country is eligible to have accelerated examination in the patent office of the “partner” country. A growing number of countries are forming PPH partnerships. The United States for example, currently has PPH programs with the United Kingdom, Canada, Japan and Korea respectively. IP Australia may seek to establish PPH programs with other countries depending on the success of this pilot program.

Requirements in Australia:

Where a patent application is first filed in the United States and the USPTO has found some claims to be patentable, the applicant for a related patent application in Australia can request expedited examination in Australia.

The PPH pilot program expands the basis for requesting expedited examination. Australian patent law allows expedited examination where expedition is in the public interest or there are special circumstances that make it desirable, such as potential infringement. There is no official fee for requesting expedited examination however, the normal requirements for requesting examination (approved form, fee) still apply.

The request for expedited examination under the PPH must be filed in the approved form and include a table demonstrating how the Australian claims correspond with the allowed US claims. Relevant documentation issued by the USPTO must also be clearly identified. The claims for the Australian application must conform to the patentable US claims (be the same or “similar in scope”).

The PPH program cannot be used if examination has already started in Australia.

Similarly, where a patent application is first filed in Australia and IP Australia has found some claims to be patentable, the applicant for a related patent application in the US may request the USPTO to accelerate examination. The applicant requests participation in the PPH program and files a petition to “make special under the PPH program”. The petition fee of US $130 applies.

Conclusion

If you believe you have patent applications in Australia and the United States which may qualify for this program, please contact your patent attorney. For further or more specific information on the PPH pilot program in Australia or expedited examination provisions in Australia, please contact Gwen Bentley (gbentley@fbrice.com.au), Chris Owens (cowens@fbrice.com.au) or any of the other practitioners of F B Rice & Co via our website at www.fbrice.com.au

The information contained in this alert is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

 

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