Posted on 10/2/2014

Patents fast-track via new Global Patent Prosecution Highway

The Global Patent Prosecution Highway (GPPH) launched on 6 January 2014. The GPPH is a pilot scheme between 17 participating national and regional patent offices under which, once a patent application has been found allowable by one participating office, the applicant can request accelerated processing of a co-pending application at any or all of the other participating offices.

Minimising duplication of work during the examination process

The global scheme is intended to minimise duplication of work between participating offices during the examination process for co-pending patent applications, which helps to reduce the time for which the application remains pending as well as to cut work backlogs at participating offices. The GPPH replaces a patchwork of bilateral Patent Prosecution Highway (PPH) agreements between certain national offices, widening access to all participating offices and providing a unified set of procedural requirements. This should greatly simplify the process for applicants and help to reduce the time and cost of seeking patent protection in key global markets.

Accelerated processing under the new scheme can be requested for patent applications filed directly at a participating office as well as those derived from international (PCT) applications entering the national phase at a participating office.

GPPH participating offices

At present, the GPPH participating offices are the UK Intellectual Property Office (UKIPO), IP Australia, Canadian Intellectual Property Office, Danish Patent and Trademark Office, National Board of Patents and Registration of Finland, Hungarian Intellectual Property Office, Icelandic Patent Office, Israel Patent Office, Japan Patent Office, Korean Intellectual Property Office, Nordic Patent Institute, Norwegian Industrial Property Office, Portuguese Institute of Industrial Property, Russian Federal Service for Intellectual Property, Spanish Patent and Trademark Office, Swedish Patent and Registration Office, and United States Patent and Trademark Office.

Bilateral PPH agreements with offices not participating in the GPPH scheme are unaffected, including the UKIPO’s existing PPH agreement with the German Patent and Trademark Office. A similar PPH agreement to take effect between the UK IPO and China’s State Intellectual Property Office was also recently announced.

Another PPH scheme is being updated to help streamline patent examination work

Another collaborative PPH scheme already in effect between the world’s five largest Intellectual Property Offices—the European Patent Office, Japan Patent Office, Korean Intellectual Property Office, China’s State Intellectual Property Office, and the United States Patent and Trademark Office—is currently being updated to further streamline the sharing of patent examination work between those offices.

Fast-tracking patent applications via the GPPH or other PPH schemes won’t be commercially the best option for everyone, as it brings forward the costs as well as the decision—which may not be a favourable one—whether to grant or refuse the application.

If you would like to know more about accelerated patent processing or to take advantage of the new scheme, please contact us today by clicking here.

Wilson Gunn