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”.
As discussed in my aforementioned article, 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
We have recently used the PPH program to facilitate examination in the US for a number of our Australian clients. At the time of writing, 95% of all US applications participating in the PPH program had been allowed by the USPTO. While participation in the PPH program does accelerate examination, it should be noted that the average time from filing a petition to participate in the PPH program to the issuance of a Notice of Allowance is still around 150 days.
While IP Australia only has a PPH program with the USPTO, other PPH pilot programs are in operation, principally between the USPTO and other IP offices including Japan, Korea, Canada, the UK, Germany and the European Patent Office. PPH programs also exist between the Japanese Patent Office and many of the same countries.
It is therefore possible for an Australian applicant to initially participate in the PPH program with the USPTO on the basis of an accepted Australian patent application and then subsequently participate in PPH programs in other jurisdictions such as Europe and Japan on the basis of the allowed US patent application.
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 various PPH programs to obtain granted patents in foreign countries.
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
23 June 2009