Expedited Examination of Australian Patent Applications under Patent Prosecution Highways.

By: HEDIE MEKA PhD

Global Patent Prosecution Highway

IP Australia is a participating office in the GPPH. The GPPH allows expedited examination before IP Australia based upon at least one allowable claim issued on a corresponding application from an Office of Earlier Examination.

The following Offices of Earlier Examination (OEE) participate in the GPPH:

  • Austrian Patent Office
  • Korean Intellectual Property Office
  • Canadian Intellectual Property Office
  • Nordic Patent Institute
  • Danish Patent and Trademark Office
  • Norwegian Industrial Property Office
  • Estonian Patent Office
  • Patent Office of the Republic of Poland
  • Finnish Patent and Registration Office
  • Portuguese Institute of Industrial Property
  • German Patent and Trade Mark Office
  • Russian Federal Service for Intellectual Property
  • Hungarian Intellectual Property Office
  • Spanish Patent and Trademark Office
  • Icelandic Patent Office
  • Superintendence of Industry and Commerce – Colombia
  • Intellectual Property Office of New Zealand
  • Swedish Patent and Registration Office
  • Intellectual Property Office of Singapore
  • United Kingdom Intellectual Property Office
  • Israel Patent Office
  • United States Patent and Trademark Office
  • Japan Patent Office
  • Visegrad Patent Institute

​There are three (3) requirements that must be fulfilled for acceptance of accelerated examination under the GPPH.

Requirement 1

​The Australian application must be appropriately associated with either an overseas application or a PCT Application.

Overseas Application

The Australian application must be a complete standard patent application that is associated with an overseas application that has been examined by one of the participating OEE and one or more claims have been deemed to be allowable/patentable.

​The Australian application must be associated with the overseas application in at least one of the following manners:

  1. ​The Australian application claims priority from the overseas application; or
  2. The Australian and overseas applications are both based on the same PCT application; or
  3. The Australian application and overseas application claim priority from a common priority document. The priority document can be filed in any jurisdiction; or
  4. The Australian application is the basis of priority claim for the overseas application; or
  5. The Australian application is a divisional of an application referred to in (1), (2), (3) or (4) above.

PCT Application

The Australian application must be a complete standard application and be associated with a corresponding PCT application which has one or more claims that the ISA or IPEA has indicated to be allowable/patentable in a Written Opinion or examination report. The ISA or IPEA must have been one of the OEE listed above.

​The Australian application must be associated with the PCT application in one of the following ways:

  1. ​The Australian application is the PCT application and it has entered national phase; or
  2. The Australian application claims priority from the PCT application; or
  3. The Australian application is a priority document for the PCT application; or
  4. The Australian application is a divisional of an application referred to in (1), (2), or (3) above.

Requirement 2

​All the claims in the Australian application must sufficiently correspond to at least one claim considered allowable/patentable by the OEE. The claims of the Australian application may be amended to bring the claims into compliance with the allowable/patentable claims of the corresponding overseas application.​

The term “sufficiently correspond” in this context means that the claims are of the same, similar, or narrower scope as the allowable/patentable claims. For this purpose, a claim that is narrower in scope is when the claim is amended to be limited by an additional feature disclosed in the specification as filed, inclusive of the claims. Introduction of a claim into the Australian application of a new or different category to the allowable/patentable claims is unlikely to be considered to be meet the requirements of sufficient correspondence.​

Requirement 3

​A Request for Examination of the Australian application and a request for expedited examination must be filed to proceed under the GPPH. Examination under the GPPH can only be made if the first Examination Report has not issued.​

Documentary Requirements​

The GPPH request form must be accompanied by the formal request and the following supporting documentation:

  1. ​A copy of at least one office action issued by the OEE regarding the corresponding application;
  2. A copy of the claims examined by the OEE and copies of subsequent amended claims found to be allowable/patentable by the OEE; and
  3. A statement of claim concordance that indicates the relationship between the Australian claims and those of the corresponding application.

​In lieu of providing copies of the documents in (a) and (b), it is acceptable to request that IP Australia obtain the documents from the OEE’s Dossier Access System, provided that the OEE has a DAS. If relying upon IP Australia to retrieve the documents, the GPPH request must identify the relevant information (document description and date) of the office actions and claims to be retrieved from the DAS.​

Expedited Examination under the European Patent Office-IP Australia Patent Prosecution Highway (PPH)

The European Patent Office (EPO) and IP Australia participate in an independent PPH with separate requirements. Expedited examination under the EPO-IP Australia PPH have separate procedures to be followed.

Requirement 1

The Australian application and the corresponding application must have the same earliest date.

​The same earliest date can be the priority or filing date of a corresponding national application filed with the EPO or a corresponding PCT application for which the EPO has been the ISA and/or IPEA.

European Application

​In addition to being a complete application for a standard patent, the Australian application must be associated with a corresponding European application that has been examined by the EPO and one or more claims have been deemed to be allowable/patentable. The association with the EP application must be in one of the following ways:

  1. ​The Australian application claims priority from the European application; or
  2. The Australian and European applications are both based on the same PCT application; or
  3. The Australian application and European application claim priority from a common priority document. The priority document can be filed in any jurisdiction; or
  4. The Australian application is the basis of priority claim for the European application; or
  5. The Australian application is a divisional of an application referred to in (1), (2), (3) or (4) above.

PCT Application

​The Australian application must be a complete application for a standard patent and be associated with a corresponding PCT application which has one or more claims that the EPO as the ISA and/or IPEA has indicated to be allowable/patentable in a written opinion or examination report. The association with the EP application must be in one of the following ways:

  1. ​The Australian application is the PCT application and it has entered national phase; or
  2. The Australian application claims priority from the PCT application; or
  3. The Australian application is a priority document for the PCT application; or
  4. The Australian application is a divisional of an application referred to in (1), (2), or (3) above.

Requirements 2 and 3

​Requirements 2 and 3 under the EPO-IP Australia PPH program are the same as that for the GPPH pathway listed above.

Documentary Requirements

​A request for consideration under the EPO-IP Australia PPH program must be accompanied by the following:

  1. ​A statement of claim correspondence between the allowed/patented claims and the claims for consideration by IP Australia;
  2. A copy of all the office actions for the corresponding application(s) filed with the EPO containing the patentable/allowable claims and a translation thereof in English; or the latest work product in the international phase of a PCT application, the WO-ISO or, where a demand under PCT Chapter II has been filed, the WO-IPRP and a translation thereof in English.
  3. A copy of the patentable/allowable claim(s) from the corresponding EP application(s), and a translation thereof in English.

Supporting Documents

​If IP Australia already has a copy of the documents set in in (b) or (c), or these documents are available through Espacenet or PatentScope, it is acceptable to list and detail the documents relied upon for consideration.

​If the EP application or PCT application is unpublished at the time of the EPO-IP Australia PPH request, a copy of the supporting documents must be filed with the request.