What is it?
The GPPH is a pilot program which will expedite examination in any of 13 participating Patent Offices based upon a favourable examination outcome in any one of the participating Patent Offices.
It is the next logical step in a string of bilateral PPH programs/arrangements that have existed in the past. It will be particularly beneficial for Australia which has only had an ongoing PPH and PCT-PPH agreement with the USPTO.
When does it start?
The pilot program will commence operation on 6 January 2014.
Who is in it?
The 13 Patent Offices that will participate in the GPPH pilot program are:
- Australian Patent Office (“IP Australia”);
- Canadian Intellectual Property Office (CIPO);
- Danish Patent and Trademark Office (DKPTO);
- National Board of Patents and Registration of Finland (NBPR);
- Japanese Patent Office (JPO);
- Korean Intellectual Property Office (KIPO);
- Nordic Patent Institute (NPI);
- Norwegian Industrial Property Office (NIPO);
- Portuguese Institute of Industrial Property (INPI);
- Russian Federal Service for Intellectual Property (ROSPATENT);
- Spanish Patent and Trademark Office (SPTO);
- United Kingdom Intellectual Property Office (UKIPO); and
- United States Patent and Trademark Office (USPTO).
Noteworthy omissions from the above list are the European Patent Office (“EPO”) and in the Chinese Patent Office (“SIPO”).
What are the criteria?
In order to be eligible, the patent application before the Office of Earlier Examination (“OEE”) and the Office of Later Examination (“OLE”) must be corresponding applications (i.e., same filing and priority date(s), if applicable). Furthermore, the applicant must request substantive examination with the OLE at the same time as participation in the GPPH is requested, or earlier. Note, if the OLE has already commenced substantive examination, it may be at the OLE’s discretion as to whether or not to allow a request for GPPH.
Additionally, in order to participate in the GPPH, the OEE must have found at least one claim to be allowable, and the claims presented for examination under the GPPH must sufficiently correspond to the at least one claim found allowable by the OEE.
What are the advantages?
As indicated above, the main advantage is that an applicant’s corresponding applications will be fast-tracked through examination before the participating Offices. This could be beneficial where the participating Offices do not already have existing means to expedite examination.
What are the disadvantages?
In our experience with the existing PPH and PCT-PPH bilateral agreements with the USPTO, the agreement has fast-tracked the examination of corresponding US applications but has not always resulted in straightforward prosecution of the US applications.
Typically, US examiners will conduct further searches, particularly of US prior art documents, and, in the past, have examined at a higher standard than the Australian Office, particularly with the application of obviousness objections.