Global Patent Prosecution Highway simplifies existing network

Global Patent Prosecution Highway (PPH) pilot has launched on 6 January, 2014.

The offices involved in the Global PPH (GPPH) pilot are IP Australia (IP Australia), Austrian Patent Office (APO), Canadian Intellectual Property Office (CIPO), Danish Patent and Trademark Office (DKPTO), Estonian Patent Office (EPA), Finnish Patent and Registration Office (PRH), German Patent and Trade Mark Office (DPMA), Hungarian Intellectual Property Office (HIPO), Icelandic Patent Office (IPO), Israel Patent Office (ILPO), Japan 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), Intellectual Property Office of Singapore (IPOS), Spanish Patent and Trademark Office (SPTO), Swedish Patent and Registration Office (PRV), United Kingdom Intellectual Property Office (UKIPO), and United States Patent and Trademark Office (USPTO).

The GPPH pilot will allow patent applicants to request accelerated examination at any of the offices involved in the pilot if their claims have been found to be acceptable by any of the other offices involved in the pilot.

The pilot will use a single set of qualifying requirements and it aims to simplify and improve the existing PPH network so that it is more accessible to users.

Framework Provisions for the Global Patent Prosecution Highway System

  • In order to further improve the Patent Prosecution Highway (PPH) system by enhancing its attractiveness to applicants and increasing associated efficiencies for intellectual property offices, the offices listed in the document titled 'Global Patent Prosecution Highway System Participating Offices' (Annex A ) have decided to participate in a Global PPH (GPPH) pilot arrangement according to the criteria set out in the document titled Global PPH Pilot Criteria (Annex B ) and with reference to the Global PPH Principles (Annex C ).
  • The GPPH pilot will commence on Monday 6th January 2014.
  • The participating offices will periodically evaluate and exchange information on the status and effectiveness of the GPPH pilot, and may consider modifying the GPPH pilot on the basis of the evaluation results.
  • New offices wishing to join the GPPH pilot can apply to join at one of two points in every year - on the 6th January or on the 6th July. In order to be eligible to join, an office must declare its interest in joining the GPPH to the Secretariat no later than two months before these dates in order to allow existing members time to prepare for the expansion of the GPPH network. Requests to join the GPPH should be accompanied by the standard letter, provided on the Office's headed paper and signed by the Head of Office. The Secretariat will then circulate a copy of this letter to all other existing GPPH offices.
  • Offices wishing to participate in the pilot will, using the required format, provide the GPPH Secretariat with requested information including an outline of their patent application processes, quality assurance processes, and their examination practices, for consolidation into a comparative guide to practices at all participating offices.
  • This framework may be amended at any time with the consent of all the participating offices involved.
  • Offices participating in the pilot reserve the right to limit or end their participation in the GPPH pilot at any stage by giving written notice not less than one month prior to the date of withdrawal.

Annex B

Global PPH Pilot Criteria

1 Introduction

1.1 - This document provides the criteria upon which the Global Patent Prosecution Highway (GPPH) pilot is to operate.

1.2 - Under the GPPH pilot, a request for accelerated processing can be made at any participating office based on work products, including PCT work products, from any one of the other participating offices providing the following eligibility criteria are met.

1.3 - Participating offices may, if they wish, develop office-specific guidelines, e.g. to reflect their respective legal terminology and processes, and can apply additional flexibility beyond these requirements as they see fit. However, these criteria set out a standard to be adhered to by offices participating in the GPPH pilot so as to provide a uniform system for applicants, i.e. if the GPPH pilot specific requirements below are met, an application will qualify for PPH treatment.

1.4 - Where two participating offices have a pre-existing bi-lateral PPH arrangement, the guidelines of the Global PPH pilot will take precedence over those of the existing bi-lateral arrangement for the duration of the pilot.

2 Eligibility Requirements

2.1 - Offices will provide accelerated processing under the GPPH pilot for applications where the following requirements have been met:

1)The applications before the Office of Earlier Examination (OEE) and the Office of Later Examination (OLE) have the same earliest date (which may be the priority date or the filing date).
2)The OEE has found at least one claim to be allowable. The indication that a claim is allowable will be provided as an explicit statement in any substantive work product from the OEE. The claim(s) determined as novel, inventive and industrially applicable in the PCT work products has/have the meaning of allowable in this document.
3)All claims presented for examination under the GPPH pilot must sufficiently correspond to one or more of the claims found allowable by the OEE.
4)The OLE has not begun substantive examination of the application. However, OLE's may still choose to allow GPPH requests filed after examination of the OLE application has begun depending on the particular circumstances and needs of the OLE and its stakeholders.
5)A request for substantive examination must have been filed at the OLE, either at the time of the GPPH request or previously.

2.2 - Participating Offices may require that the OLE application is open to the public.

2.3 - Participating Offices may require the applicant to pay a fee for GPPH acceleration due to their respective legal requirements for accelerated processing.

2.4 - For an OEE application to be valid as the basis of a GPPH pilot request it must have been substantively examined, including consideration of novelty and inventive step, by an OEE participating in the GPPH pilot.

3 Supporting documentation required for GPPH request

3.1 - Participating offices will require the following documentation to support a request for acceleration under the GPPH pilot:

1)A completed GPPH request form;
2)A copy of the work product(s) which are relevant to the allowability of the claims of the corresponding OEE application, if not available via Dossier Access Systems; and
3)A copy of the claims found to be allowable by the OEE, if not available via Dossier Access Systems.

3.2 - Participating Offices may also require the applicant to provide the following documentation:

1)Copies of citations raised against the OEE application which are not available to the OLE via their regular databases or search files;
2)Translations of any of the documents listed in points 3.1 2) or 3) (see point 3.3 below); and
3)A claim correspondence table that shows the relationship between the claims of the OLE application and those of the OEE application that were considered allowable.

3.3 - Participating offices will use Dossier Access Systems and machine translations to access and assess supporting documentation to the maximum extent possible. If the participating office has difficulty in obtaining documents listed in points 3.1 2) or 3) and translations thereof, the applicant may be asked to submit them. When machine translations are determined by the OLE to be of insufficient quality, then the applicant may also be asked to provide manual translation.

4 Consideration of a GPPH request

4.1 - Requests for accelerated examination under the GPPH will be considered promptly by the OLE. Where a request for accelerated examination under the GPPH pilot is found to be deficient, the OLE will inform the applicant of the deficiencies and provide the applicant with at least one opportunity to correct the application within a reasonable period of time.

5 Miscellaneous Provisions

5.1 - Participating Offices will share basic statistical information and may conduct studies as appropriate, and as resources allow, in order to monitor usage and improve the quality of the system as a whole.

Patent Prosecution Highway
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Patent Prosecution Highway
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