Acceleration of Patent Prosecution in Europe and Australia

Avi Freeman and Charlotte Emmanuel-Desir | September 2016

The Patent Prosecution Highway (PPH) offers an accelerated route to grant for a patent application, where a favourable determination of patentability has already been issued by a PPH partner office. 

A new fast-track option for patent prosecution in Europe and Australia has become available with the establishment of a new PPH pilot programme to expedite examination of patent applications before the European Patent Office (EPO) and the Intellectual Property Office of Australia (IP Australia). 

The EPO currently has a number of other PPH pilot programmes in place with patent offices in the US, Canada, China, Israel, Japan, Republic of Korea, Mexico and Singapore.  The new pilot programme operates in the same way as these existing PPH pilot programmes.

PPH pilot programmes provide a way for an applicant to obtain a granted patent more quickly.   The programmes aim to increase the speed and efficiency of the examination process by taking advantage of the effort already expended on a patent application during examination by another patent office.

If corresponding applications are filed at two patent offices participating in a joint PPH pilot programme, eligibility for PPH requires one office to have already examined the application and determined at least one claim to be allowable, and also requires PPH to be requested at the other office before  it commences examination. 

The Office of Later Examination (OLE) can subsequently use the work product established during examination by the Office of Earlier Examination (OEE).  This reduces the amount of work that has to be repeated and therefore shortens the timescale for examination.

The OEE may have produced the work product through prosecution of a national application or a PCT application in the national/regional phase, or alternatively through acting as the International Searching Authority (ISA) or International Preliminary Examination Authority (IPEA) for a PCT application in the international phase.

A further requirement for an application’s PPH eligibility is that the claims sufficiently correspond to the claims determined allowable in the OEE application.  This means the scopes of the two sets of claims must be the same or similar, or the OLE claims must be narrower than the OEE allowable claims.

The new PPH pilot programme between the EPO and IP Australia was launched in July 2016 and will run for an initial trial period of three years.  Both the EPO and IP Australia can be either the OEE or the OLE for an application requesting participation in the PPH pilot programme.

Requesting participation in a PPH pilot programme can be a simple and inexpensive way of getting a patent granted more quickly if a favourable determination of patentability has been issued by a PPH partner office.  The EPO currently has a number of PPH pilot programmes in place with patent offices in the US, Canada, China, Israel, Japan, Republic of Korea, Mexico and Singapore, and now Australia. 

The UK Intellectual Property Office (UKIPO) has a PPH programme in place with China and also participates in the Global PPH pilot, which provides a network of PPH partners including patent offices in the US, Australia, Canada, Israel Japan, Republic of Korea, Singapore, and a number of European countries.

If you would like further information or advice regarding PPH, please feel free to contact us.