European Patent Office Extends Patent Prosecution Highway Pilot Programme with IP Australia

Effective from 1 July 2019, the European Patent Office (EPO) will be extending its Patent Prosecution Highway (PPH) programme with IP Australia, enabling applicants to fast track examination procedures and obtain corresponding AU and EU patents faster and more efficiently.

The trial within Australia was initially launched in July 2016 and the programme is being extended for three years until 30 June 2022.  Current requirements for participation continue to apply.

Via the PPH, once claims in an Australian national patent application, or in an international patent application under the Patent Cooperation Treaty (PCT) for which IPAU acts as the international searching authority (ISA) or international preliminary examination authority (IPEA) have been determined to be patentable and allowable, the positive examination results can be brought to the attention of the EPO in order to expedite examination of the corresponding EU patent application.

Most Australian patent applicants who seek to protect their innovations in Europe initiate the process by filing a PCT application. Securing a positive international preliminary report on patentability (IPRP) either from the IPAU acting as ISA or IPEA,  has the potential to reduce prosecution time and costs at EPO once the PCT application ‘converts’ into an EU patent application. Accordingly, putting extra effort at an early stage in the patent prosecution process to obtain a positive patentability report has the potential for substantial savings later on, noting that Global PPH programmes are available to Australian applicants also in other countries like USA, Canada, South Korea and Japan.

Whilst perhaps an imperfect indicator- due to the in part substantial time lag between regional phase entry at EPO of a PCT application and grant date (3 to 5 years is not unusual), the ratio of granted EU patents to EU patent applications of Australian applicants has increased over the last 10 years from around 0.3 to 0.54 in 2018 (according to EPO’s latest statistical reports). Interestingly, a marked step change occurred in 2016 when 440 patents were granted, compared with 328 the previous year. In 2018, 535 patents issued. Perhaps an indication of an increase in patent quality of Australian innovators?

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