Friday 28 July 2017
New Zealand now part of the global patent prosecution highway
It is now possible to request expedited examination of a New Zealand patent application based on the allowance of one or more claims in a corresponding application in another GPPH office known as the Office of Earlier Examination (OEE). It is also possible to expedite examination in another GPPH country based on the allowance of at least one claim in New Zealand.
What is the GPPH and who is involved?
The GPPH is an agreement between several patent offices around the world that provides a patent applicant with a means to expedite examination on the basis of one or more allowed claims of a corresponding application allowed by another participating patent office.
The participating patent offices include some of New Zealand’s largest export partners such as the United States, Australia, Japan, South Korea and Canada. The GPPH programme also includes some European national patent offices that are part of the GPPH, including the United Kingdom, Germany, Sweden, Spain and Russia. However, there are some notable omissions from the GPPH programme such as the European Patent Office (EPO), China and India. We will have to wait and see if these patent offices join the GPPH.
Requirements to use the GPPH programme in New Zealand
As stated on the IPONZ website here, the requirements for the GPPH programme are listed below. An applicant can request expedited examination at the New Zealand Patent Office (IPONZ) if:
- The New Zealand patent application and the application of the Office of Earlier Examination (OEE) must have the same earliest priority date; and
- At least one novel claim in the OEE application must have been explicitly declared patentable in a report from the OEE.
A request under the GPPH, filed at IPONZ, must include the following documents:
- A copy of the examination report or office action issued by the OEE which expressly identifies the patentable claims;
- A copy of the claim set which includes the patentable claim(s) of the OEE application; and
- A claims table that illustrates the patentable claim(s) of the OEE application and the corresponding claim(s) to be examined by IPONZ.
The claims of the New Zealand application must “sufficiently correspond” to the claims of the OEE application. “Sufficiently correspond” means the claims to be examined by IPONZ must be identical or similar in scope, and identical in category to the claims of the OEE application. The claims of the New Zealand application cannot be broader in scope than those of the OEE application.
A request for expedited examination must be lodged in the usual manner and must be lodged at the time of filing the application or at the time of requesting examination. We recommend applicants file the GPPH request at the same time as requesting examination.
Potential strategies and advantages of using the GPPH
The GPPH can be used to expedite examination of an application in a participating country, based on an allowed claim in another participating country. Expedited examination can lead to an earlier granted patent, which can allow the patent applicant to commercially exploit the patent e.g. enforce, license or sell the patent, or attract investors or commercial partners.
Another advantage of accelerating examination using the GPPH is that it can give an earlier indication of the scope of protection that will likely be granted in other participating countries. This information can be valuable in making decisions regarding an overall commercialisation strategy.
For overseas based applicants, the GPPH can be used to expedite examination of a corresponding application in other participating nations based on accepted claims for their New Zealand patent application. Alternatively, overseas based applicants can use accepted claims of a corresponding application to expedite examination of their New Zealand patent application.
For New Zealand based applicants, accepted claims of their New Zealand patent can be used to expedite examination of corresponding overseas applications in GPPH signatories. This is because the New Zealand Patent Office (IPONZ) provides reasonably fast and robust examination as compared to other countries.
Expedited examination can still be requested in the conventional way in any of the participating GPPH countries that offer conventional expedited examination, for example if there is a suspected infringement or any other expedited examination mechanism.
Final considerations of using the GPPH
It is important to note that the GPPH does not guarantee grant or allowance of a patent in a participating office using a GPPH request. The use of the GPPH simply speeds up examination and the issuance of a first examination report for the patent application.
We recommend carefully considering the use of the GPPH and basing your decision on your commercial strategy, IP strategy and state of your current patent portfolio. The use of the GPPH provides another strategic tool as part of your overall IP strategy.