Using Accepted Australian Claims To Accelerate and Assist Prosecution of US Claims Under Revised PPH

The Australian Patent Office (IP Australia), The United States Patent and Trademark Office (USPTO) and several other patent offices around the world have announced a revised pilot program for the Patent Prosecution Highway (PPH). The program will enable more patent applicants to take advantage of favourable patent prosecution results achieved in one country to accelerate and assist prosecution in another country. The program commenced on 15 July 2011 and is planned to operate as a pilot program for one year.

Under the previous PPH rules, patent applicants could reuse search and examination results achieved in another country only if that other country was the first country in which an application was filed in a multi-country patent "family". Under the revised program, patent applicants can reuse successful patent prosecution results achieved on any patent family member from any office participating in the revised program.

For example, under the revised PPH program, patent applicants who first filed a patent application in the United States, and who subsequently filed a corresponding patent application in Australia, can now use a Notice of Acceptance of their Australian claims issued from IP Australia to accelerate and assist in prosecuting their corresponding US application. Patent examination in Australia generally can be expedited at low cost and prosecution concluded within a period of only several months. Thus receiving a Notice of Acceptance in Australia well before receiving a first office action on a corresponding application in the United States often can be achieved.

Other patent offices participating in the revised program include the Canadian Intellectual Property Office (CIPO), Japan Patent Office (JPO), National Board of Patents and Registration of Finland (NBPR), Federal Service on Intellectual Property, Patents & Trademarks of Russia (Rospatent), Spanish Patent and Trademark Office (SPTO) and United Kingdom Intellectual Property Office (UKIPO).

More information on the revised program (called the PPH MOTTAINAI Pilot) is available here.

For more information on how to best leverage Australian applications under the revised PPH program, please contact us on 61 7 3229 2655 (Brisbane), 61 3 9602 3144 (Melbourne) or 61 2 8216 0970 (Sydney). Or, email us at: mail@fak.com.au