There are two ways of expediting examination in Australia:
General Expedited Examination
The Global Patent Prosecution Highway (GPPH) pilot programme
The GPPH pilot programme commenced in January 2014.
When will General Expedited Examination be allowed?
The Commissioner of Patents must be reasonably satisfied that it is in the public interest or there are special circumstances that make it desirable to expedite examination. IP Australia readily accepts requests made under this provision, including requests based on commercial reasons, for example if the applicant is seeking to enforce patent rights or if an investor requires a granted patent before investing in the invention.
General Expedited Examination also specifically enables expedited examination of applications for inventions relating to environmentally-beneficial technologies, under the Green Technology Fast Track Programme.
What are the criteria for expediting examination under the GPPH?
In order to request expedited examination under the GPPH the Australian patent application must be appropriately associated with a corresponding foreign or PCT application. The claims of the Australian application must sufficiently correspond to the foreign or PCT application and at least one of the claims must have been found to be allowable / patentable by a participating foreign patent office, International Searching Authority, or International Preliminary Examination Authority.
Claims will be considered to “sufficiently correspond” when they are the same as, similar to, or narrower in scope than the claims indicated as allowable / patentable. This can be achieved by amending the claims prior to requesting examination.
How must the applications be associated to expedite examination under the GPPH?
The Australian patent application is considered to be appropriately associated with the corresponding foreign or PCT application when:
i. The Australian application claims priority from the foreign or PCT application;
ii. Both the Australian and foreign application are based on the same PCT application;
iii. Both the Australian and foreign or PCT application claim priority from a common priority document;
iv. The Australian application is the basis of the priority claim for the overseas or PCT application; or
v. The Australian application is a divisional of an application that meets the criteria of (i), (ii), (iii) or (iv).
The foreign or PCT application used as the basis for expediting examination of the Australian application can be based on a first filing at an office that is not participating in the GPPH.
Which intellectual property offices does Australia have GPPH agreements with?
The patent offices / countries participating in the GPPH agreement are:
- Canadian Intellectual Property Office*
- Danish Patent and Trademark Office
- Hungarian Intellectual Property Office
- Icelandic Intellectual Property Office
- Israel Patent Office*
- National Board of Patents and Registration of Finland*
- 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*
- United Kingdom Intellectual Property Office
- United States Patent and Trademark Office*
- * PCT applications examined by these offices acting as an International Search Authority or International Preliminary Examination Authority can also be used as the basis for expediting examination under the GPPH. This article was written with assistance from Harriet Sandstad.