Accelerated Examination of Australian and US applications with the Pilot Patent Prosecution Highway

On 31 March 2008, IP Australia and the US Patent and Trade Mark Office (UPSTO) announced the launch, in April, of a new trial cooperation initiative between Australia and the United States in line with the existing Patent Prosecution Highway (PPH) model. This announcement follows on from successful PPH pilot agreements between the UK Intellectual Property Office (UK-IPO), the USPTO and the Japanese Patent Office (JPO). Under the new trial system, an applicant receiving an examination report from either IP Australia or the USPTO with at least one patentable claim in an application may request that the other office accelerate the examination of the corresponding application. The pilot program will be trialled for a one year period to gauge the interest of patent applicants in the program, and may be extended for a further one year period.

The IP Australia requirements for requesting accelerated examination under the new pilot program can be summarised as follows:

1. The Australian application is a standard complete application and is either:
   1. a nationally filed application which validly claims priority under the Paris Convention from either a single USPTO national application or multiple USPTO applications; or
   2. a PCT national phase application where the PCT international application has validly claimed priority from a USPTO national application or multiple USPTO national applications; or
   3. a PCT national phase application (with a corresponding PCT national phase application in the US) where the PCT international application has no priority claims; or
   4. a divisional or an application referred to in (a), (b) and (c) above.
2. There must be at least one corresponding USPTO application which has one or more claims that are determined to be allowable by the USPTO.
3. All claims in the standard patent application subject to accelerated examination must sufficiently correspond, or be amended to sufficiently correspond, to one or more of those claims indicated as allowable by the USPTO, or be dependent or fall within the scope of such a claim.
4. IP Australia has not issued a first examination report on the application.
5. It is hoped that this pilot program will significantly reduce pendency times and help to further raise the efficiency and quality of patent examination in both the United Sates and Australia. Please contact WATERMARK if you are interested in receiving further information.

Sources: http://www.ipaustralia.gov.au/pdfs/patents/PPH_USPTO_Procedures.pdf, http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/pph_ipau.pdf