Patent Prosecution Highway between US and AU Extended Indefinitely.

The Patent Prosecution Highway (PPH) pilot program and the PCT Patent Prosecution Highway (PPH) pilot program between the US Patent Office (USPTO) and the Australian Patent Office (IP Australia) was due to expire on 13 April 2012.

However, the USPTO and IPAustralia agreed, with effect from 15 July 2012, that the programs have been extended indefinitely.

Here is a link to the announcement of the extension on IP Australia’s website.

Under the PPH pilot programs between the US and Australia, an applicant in one country may request accelerated examination of a Patent Application in the other country based on a positive ruling from either the USPTO or IPAustralia on novelty and inventive step/obviousness in relation to one or more claims of a Patent Application.  This includes National Patent Applications or International Patent Applications where the USPTO or IP Australia are acting in their capacity as an International Searching Authority. This means that if an applicant has received a positive opinion on the novelty or inventiveness of one or more claims of a US or Australian or an International Patent Application from either the USPTO or IP Australia then the applicant could seek to have examination of a corresponding Patent Application in the other jurisdiction accelerated.

There is no official fee for entering the PCT PPH program in the US or Australia. To be eligible for accelerated examination under the PCT PPH program the corresponding Patent Application must include claims that are of the same, similar or narrower scope to the claims of the Patent Application subject to the positive opinion.  The most notable drawback to the program is that if the Examiner does not concur with the previous positive opinion and new objections are raised then it is not possible to amend the claims of the corresponding Patent Application to include limitations not already present in the claims at the time the PPH request as filed.

Nonetheless, there can be many advantages to accelerating the processing of patent applications through to grant such as bringing forward the patentee’s ability to take action for Patent Infringement.

If you would like to hear more about the Patent Prosecution Highway pilot program and the PCT Patent Prosecution Highway pilot program between the USPTO and IP Australia and how these programs can benefit you please contact Daniel McKinley.