TAKE THE PATENT PROSECUTION HIGHWAY TO THE US
On 14 April 2008 a Patent Prosecution Highway (PPH) pilot program was introduced on a trial basis for one year between IP Australia and the US Patent and Trademark Office (USPTO).
The PPH allows the prosecution of a US patent application to be expedited on the basis of a corresponding
accepted Australian patent application and vice versa for an Australian patent application on the basis of an
allowed corresponding US patent application. This is particularly advantageous for local Australian patent
applicants seeking to protect their invention in the US. It allows the US examination process to be
significantly sped up, giving the applicant the opportunity to obtain a US patent much sooner than via the
standard route. The PPH works similarly in reverse for US patent applicants wishing to expedite examination of their Australian patent applications
Using the PPH to facilitate examination in the US will also likely result in a less protracted examination process and therefore, significant cost savings for Australian applicants.
Other PPH pilot programs have been in operation since 2006 principally between the USPTO, the UK
Patent Office and the Japanese Patent Office. These PPH programs have been generally well received and
have recently been extended – it appears the PPH may be here to stay. It is intended that the Australia-US PPH program will be extended at the end of the initial trial period.
The early grant of a US patent can be an exceptionally valuable commercial tool for Australian patent
applicants keen to license or sell their patent rights in the US. Further, the early grant of a US patent can
greatly assist in facilitating the grant of patents in other jurisdictions which rely heavily on the results of
foreign prosecution.
We strongly advise that Australian patent applicants, who are interested in corresponding patent protection
in the US, take advantage of the PPH.
Please contact COTTERS if you would like further information on how you can use the PPH to your advantage.
By Marcus Dalton
COTTERS Patent & Trade Mark Attorneys
30 September 2008