IP Australia has announced a new patent prosecution highway (PPH) pilot program with the EPO. This program will allow applicants to request accelerated examination in either office. The key benefits for applicants should be faster grants, and reduced costs. The pilot program with the EPO fills a gap in the global PPH program which already exists between IP Australia and 20 other countries.
The pilot program started on 1 July 2016, and will run for a period of three years ending on 30 June 2019. The program could be extended if it works well.
What do I need to use the system?
A Paris Convention application or PCT application. One or more claims in this application must be considered patentable/allowable by the office of earlier examination (OEE). This may be IPAustralia or the EPO directly, or in their capacity as international search or examination authority (ISA/IPEA).
- A corresponding application filed in IP Australia or the EPO as the office of later application (OLE). All claims in that application must sufficiently correspond to the patentable/allowable claims.
- An indication as to how the claims in the later application correspond to the claims in the earlier application.
- A request to participate in the pilot program.
- A request for examination if not already filed.
- Supporting documents in the form of a physical copy of office actions establishing patentability/allowability, and the patentable/allowable claims. Alternatively, the supporting document requirement can be satisfied by providing a list of the documents which are retrievable online. Verified translations may be required.
The pilot program cannot be used if substantive examination has already begun.
Once a request to participate in the pilot program is filed, accelerated examination will be carried out. At IP Australia, this is likely to mean an examination report will issue within one to two months.
Further information on the pilot program and requirements can be found at IP Australia.