Kiwis Jump in the Fast Lane: New Zealand joins the Global Patent Prosecution Highway
Friday 7th July 2017
Article written by: Duncan Schaut
The Intellectual Property Office of New Zealand (IPONZ) announced yesterday that New Zealand has joined the Global Patent Prosecution Highway (GPPH) pilot programme. The GPPH allows faster examination of a patent application based on a favourable examination outcome of a corresponding application in another GPPH country.
What is the GPPH?
The GPPH is a multilateral agreement between patent offices that provides patent applicants with an option to accelerate patent examination in those patent offices based on a favourable examination outcome in any of the other participating patent offices. The overall aim of the programme is to reduce patent pendency (i.e. the time from application to grant) and to increase efficiencies between patent offices by relying on the search and examination carried out by other offices.
The GPPH is a relatively inexpensive means by which an applicant can utilise the early examination of one application to accelerate proceedings in other participating countries. For example, an applicant may wish to rely on earlier examination in New Zealand to accelerate proceedings for their corresponding patent application in the United States, Australia and Japan.
There are currently 23 participating patent offices in the GPPH programme including the patent offices in Australia, Canada, Singapore, Japan, the United Kingdom, the United States and a number of European offices. The full list of participating countries is here.
Advantages of applying in New Zealand
Fast-tracking examination will ensure that a patent application proceeds more quickly through the examination queue. Utilising the GPPH route is beneficial in countries where a conventional accelerated examination process is not available, or where the patent office is experiencing significant examination backlogs.
New Zealand’s patent office (IPONZ) is efficient in its examination and does not have significant delays in patent examination compared to other countries. Applicants, whether in New Zealand or overseas, may wish to consider requesting examination first in New Zealand to obtain a good quality early examination. A claim set accepted in New Zealand can then be used to accelerate examination in any of the other GPPH countries.
Benefits of accelerating examination
There are a number of reasons why an applicant may wish to speed up examination.
For example, obtaining early information on the novelty and inventiveness of the invention is a useful indication of the likely scope of protection that will be granted in other countries. This information is valuable when making decisions about the development of an intellectual property and commercialisation strategy, and reduces the risks of wasted expenditure.
In addition, earlier examination usually means earlier grant of a patent right. There are many commercial situations where early grant of a patent may be a desirable outcome. For example, granted patents may be licenced, sold or enforced and the asset value associated with a granted patent can be used to gain further investment or support.
Requirements to use the GPPH programme
An applicant can request expedited examination of a standard patent application under the GPPH:
- when examination of a corresponding overseas or PCT application has been performed by one of the participating offices; and
- where that participating office has found at least one claim to be allowable.
A corresponding application means an overseas application that has the same earliest filing or priority date for the same inventor or applicant.
Applicants will still need to request examination in that country as usual, and at that time, or any time before the first examination report issues in that country the applicant will need to request examination under the GPPH.
How to use the GPPH programme in New Zealand
IPONZ has provided a list of mandatory filing requirements when expediting examination in New Zealand under the GPPH. These are:
- The New Zealand application and the application of the participating Office of Earlier Examination (OEE) must have the same earliest filing or priority date (whichever is relevant).
- At least one claim in the OEE application must have been found to be patentable, i.e. novel, inventive and useful. There must be an express statement of patentability for these claim(s) in a report or action issued by the OEE.
- A request under the GPPH must include the following documents:
- A copy of the report or action issued by the OEE which expressly identifies the patentable claims.
- A copy of the claim set which includes the patentable claim(s) of the OEE application.
- A claims correspondence table which sets out the patentable claim(s) of the OEE application and identifies the corresponding claim(s) to be examined by IPONZ.
Things to note
It is important to note the GPPH does not guarantee grant in a participating office even if the examination request is based on accepted claims of the corresponding application. The GPPH merely accelerates examination, it does not guarantee acceptance.
There are a number of notable absentees from the GPPH including the European Patent Office (EPO), Intellectual Property India and State Intellectual Property Office China. We wait with interest to see if these patent offices will join the GPPH in the future.
Patent applicants can still request accelerated examination in New Zealand outside of the GPPH for “good and substantial reasons”, for example if there is suspected infringement.
The GPPH opens up many options for accelerating the examination and grant of a patent in participating countries.
For any applicants planning to use this programme, we emphasise that proper planning and preparation is essential to gain the maximum leverage from the programme. This includes tailoring any GPPH strategy to your specific commercial circumstances and your patent portfolio.
If you are interested to find out more about using the GPPH to accelerate examination, please contact us today.
This article is intended to summarise potentially complicated legal issues, and is not intended to be a substitute for individual legal advice. If you would like further information, please contact a Baldwins representative.