Further to my article of 30 September 2008 “Take the Patent Prosecution Highway to the US”, the USPTO and IP Australia announced on 14 April 2009 that the Patent Prosecution Highway (PPH) pilot program would be extended for an unspecified period of time “in order to gather more information and assess the feasability of the program prior to making the PPH program permanent”.
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 any further information about the changes or if you wish to request examination on any pending patent applications.
By Marcus Dalton
Cotters Patent & Trade Mark Attorneys
30 September 2008