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Patent Prosecution Highway: Australia and the EPO

Patent Prosecution Highway: Australia and the EPO

07/08/19

As of the beginning of July 2019, the Intellectual Property office of Australia joined the European Patent Office’s Patent Prosecution Highway pilot programme. This pilot programme can enable applicants with an allowable patent granted by either the Australian office or by the EPO to obtain protection more quickly and cost-effectively in the corresponding jurisdiction.

What is the Patent Prosecution Highway?

The Patent Prosecution Highway (PPH) allows for accelerated examination and patent prosecution in a participating jurisdiction provided the application has been found to allowable elsewhere. As long as substantive examination has not begun in the jurisdiction of interest and a sibling application has been found to satisfy the requirements of a corresponding participating jurisdiction, then accelerated examination may take place.

The Australian-EPO PPH allows these examining offices to share their workloads by reusing search and examination results and by exploiting the prosecution process already carried out in the corresponding office. It is important to note that although the patent may have been granted in one jurisdiction, the patent office in question will still engage in the examination process under the consideration of practices applicable to its own country which may involve carrying out additional searches or examinations.

What are the requirements?

In order to participate in the Australian-EPO PPH programme there are four requirements that must be met. If the application for which accelerated examination is requested is European, then:

1)     The European application must have the same earliest date as the corresponding Australian application. This can be the priority or filing date of the corresponding application filed with the Australian Patent Office, or a corresponding PCT application for which the Australian Patent office was the International Search Authority.

2)     The corresponding Australian application must have at least one claim that is considered patentable/allowable by the Australian Patent Office.

3)     All the claims in the European application must sufficiently correspond to the patentable/allowable claims in the corresponding Australian application. This means that the same, or a similar, or a narrower scope is covered by the European claims when compared to those in the Australian application. If the claims are narrower, the features that cause this limiting must have basis within the specification. Additionally, claims of a different category are not considered to sufficiently correspond. For example, if the Australian application consists of only product claims and the European application contains both product and method claims, the method claims would not fulfil this requirement. 

4)     Substantive examination of the European application must not havebegun. Examination under the PPH can only be made if the first Examination Report for the application in question has not yet been issued.

And these requirements apply vice versa should the application for which accelerated examination is requested is Australian.

What documentation is needed?

Certain documents are necessary to form a valid application. For accelerated examination to take place on a European application with a corresponding and allowable Australian counterpart, the applicant has to:

1)     File a request for participation in the IP Australia-EPO PPH pilot program.

2)     File an indication of claims correspondence which is included in the Request Form.

3)     Submit a copy of all of the official correspondence for the corresponding Australian application, containing the patentable/allowable claims that are the basis for the IP Australia-EPO PPH request. Alternatively, the latest work product in the international phase of a PCT application, the WO-ISA or, where a demand under PCT Chapter II has been filed, the WO-IPEA or the IPER can be submitted.

4)     Submit a copy of all of the patentable/allowable claims of the Australian application.

5)     Submit a copy of all other documents (i.e. non-patent documents) that were cited during the prosecution of the Australian patent.

If all of these requirements are met then the application will undergo accelerated examination and, on average, the first examination report is issued in less than six months after the PPH request has been submitted.