Who does this affect?

Anyone involved in filing patent applications in Australia and the USA who would like them granted more quickly.

What do you need to do?

Review your patent portfolio and consider whether there are any applications in Australia or the USA which you want expedited and which meet the requirements.

Author
Shyama Jayaswal  
Senior Associate

---

Wayne McMaster  
Partner
T +61 3 9643 4407

---

Sydney
Kim O'Connell  

Melbourne
Robert Cooper  
Wayne McMaster  

Brisbane
John Swinson  

---

You need to read this if

• Early announcement of a granted patent in Australia or USA has commercial strategic advantage to you, eg maintain market confidence.
• Early grant of a patent independently demonstrates the strength of the IP to your potential commercial partners/licensees/investors.
• Early grant of a patent is a milestone in your commercial agreement leading to a further payment.
• Early enforcement is a priority which in turn relies upon early grant of your patent.

On 14 April 2008, a 12 month Patent Prosecution Highway (PPH) pilot program will commence at IP Australia and the USPTO. The PPH enables your patent application to be expedited and thus jump the queue to be considered by a patent examiner earlier than normal. It is equivalent to a request for accelerated examination in Australia or a Petition to Make Special in the USA.

Put simply, you can use early allowance of your Australian patent application to accelerate the examination of your corresponding US patent application, or vice versa.

Only certain applications are eligible to enter into the pilot program. Essentially, an Australian application seeking to enter the PPH must claim priority from a US national application (which includes provisional applications), or derive from the same PCT application having no priority claim. Equally, this arrangement applies to a US application seeking to enter the PPH at the USPTO.

The formality requirements for entering the PPH are straightforward:

• The corresponding Australian or US application must have allowed claims as evidence in an examiner’s report/office action.
• The claims in US/Australia must have the same or similar scope to the allowed claims (voluntary amendments can be filed with the request).
• Copies of the examiner’s reports/office actions and allowed claims must be filed.
• An office action/examiner’s report must not already have issued.
• A table showing how the claims correspond must be provided.

There is no change to the standard of examination or the issues considered by IP Australia or the USPTO.

How to take advantage of the PPH

If you have a US application claiming priority from an Australian patent application, we recommend that examination of the Australian application is requested as soon as possible so that a set of allowable claims is established as early as possible. These allowable Australian claims can then be used to expedite the examination of the US application via the PPH. This same strategy can be used in reverse.