AU-EP Patent Prosecution Highway Extended

Following a successful three-year trial, the European Patent Office (EPO) and the Australian Patent Office (IP Australia) have agreed to extend the bilateral Patent Prosecution Highway (PPH) pilot program between them for a further three years.

This bilateral PPH pilot program enables applicants with either an accepted (or granted) patent application in Europe or Australia, to expedite examination of a corresponding patent application in the other jurisdiction – provided that at least one of the claims deemed to be in condition for acceptance is included in the corresponding patent application, and is of a claim scope that is no broader than that of the originally accepted claim. Therefore, if you obtain an accepted Australian application, or have a granted Australian patent, and have at least one of those accepted claims in your European application, you can use the PPH to progress your European application more quickly through to examination.

IP Australia is also a participating patent office in the Global Patent Prosecution Highway (GPPH), which also allows expedited examination before IP Australia based upon at least one allowable claim issued on a corresponding patent application from the patent office of one of 24 other jurisdictions, including the United States, Japan, Korea, Canada, Germany, UK and Singapore.

According to the GPPH, it is possible to expedite examination of a patent application in one jurisdiction based on either;

  • a positive Office Action (examination report) or Notice of Allowance (acceptance) being issued by the patent office of the other jurisdiction for a corresponding patent application; or
  • a positive Written Opinion issued by the International Search Authority (ISA) or International Preliminary Examination Authority (IPEA) in respect of an international PCT application from which the patent application is derived.

From a patent office’s perspective, the PPH programs are intended to secure more uniform patent rights across the jurisdictions involved, while improving quality and reducing the search and examination burden on the participating offices.

From an applicant’s perspective, these programs provide a means by which to expedite examination overseas and reduce examination costs.

Please contact one of our patent attorneys if you would like to explore the opportunity of expediting examination of your patent application in one or more other jurisdictions.

BSc (1st Class Hons) PhD MIP

Jon brings invaluable international and local IP-related experience to POF. His experience extends to seven years scientific research work in Japan, intellectual property management in the UK, and broad-ranging patent and trade marks attorney experience in both Sydney and Melbourne.