2.13.4.5 Expedited Examination Under the IP Australia-European Patent Office Patent Prosecution Highway

Date Published

Note: The following procedures apply to IP Australia-European Patent Office Patent Prosecution Highway (IP Australia-EPO PPH) requests filed on or after 1 July 2016.  

Note: From 8 July 2019 examiners are no longer required to complete a PPH - Examiner Evaluation Form.  Examiners should instead complete the questions regarding the IP Australia-EPO PPH application in DocGen when preparing the Exam Corro task in PAMS; see 5.10.24 Examination Report in DocGen for Accelerated Exam Request Under Patent Prosecution Highway for further information.  

For applications that proceed directly to acceptance, there is no requirement to complete the PPH – Examiner Evaluation Form.  

If an application does not satisfy the requirements for accelerated examination under the IP Australia-EPO PPH, examiners should follow the procedures in
Application Does Not Meet IP Australia-EPO PPH Requirements below.


Further details regarding the requirements and procedures for filing a request for accelerated examination under the IP Australia-EPO PPH are provided on the IP Australia website.


Background

The European Patent Office (EPO) and IP Australia commenced a comprehensive Patent Prosecution Highway pilot program on 1 July 2016.  The pilot initially ran for a period of three years ending on 30 June 2019.  It was later agreed to extend the pilot program for a further three years ending on 30 June 2022.

The PPH pilot program leverages fast-track patent examination procedures already available at the offices to allow applicants to obtain corresponding patents faster and more efficiently.

The EPO and IP Australia will evaluate the results of the pilot program to determine whether and how the program should be fully implemented after the trial period.  The trial period may be extended if necessary to adequately assess the feasibility of the PPH program.  Either party may also terminate the PPH pilot program early if the volume of participation exceeds a manageable level, or for any other reason.  Notice will be published if the PPH pilot program between the EPO and IP Australia is terminated before 30 June 2022.


Requirements for Requesting Participation in the IP Australia-EPO PPH Pilot Program

In order to be eligible to participate in the PPH pilot program, the following requirements must be met:

Requirement 1: The AU Application Must Have the Same Earliest Date With the Corresponding Application, Whether this 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.

1A. National Work Products

The AU application must be a complete application for a standard patent and be associated with a corresponding EP application that has been examined by the EPO and one or more claims have been deemed to be allowable/patentable.

The AU application must be associated with the EP application in one of the following ways:

i. The AU application claims priority from the EP application; or

ii. The AU and EP applications are both based on the same PCT application; or

iii. The AU application and EP application claim priority from a common priority document.  The priority document can be filed in any jurisdiction; or

iv. The AU application is the basis of priority claim for the EP application; or

v. The AU application is a divisional of an application referred to in i, ii, iii or iv above.

1B. PCT Work Products

The AU application must be a complete application for a standard patent and is 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 AU application must be associated with the PCT application in one of the following ways:

i. The AU application is the PCT application and it has entered national phase; or

ii. The AU application claims priority from the PCT application; or

iii. The AU application is a priority document for the PCT application; or

iv. The AU application is a divisional of an application referred to in i, ii, or iii above.

The IP Australia-EPO PPH program is not a mechanism for requesting expedited examination of an AU application where IP Australia was the ISA or IPEA and the PCT application is an Australian PCT application.  In this situation examiners should follow the procedures in Application Does Not Meet IP Australia-EPO PPH Requirements below.

Requirement 2: Corresponding Australian Claims

All claims in the AU application for which a request for participation in the IP Australia-EPO PPH pilot program is made must sufficiently correspond to the patentable/allowable claims in the corresponding EP application(s).

Claims are considered to sufficiently correspond where, accounting for differences due to claim format requirements, the claims are of the same or a similar scope or the claims in the application are narrower in scope than the claims in the corresponding EP application(s).  In this regard, a claim that is narrower in scope occurs when an EP claim is amended to be further limited by an additional feature that is supported in the specification (description and/or claims).  A claim which introduces a new/different category of claims to those claims indicated as allowable/patentable is generally not considered to sufficiently correspond.  However, where Australian law allows variation in the category of claims, applicants may consider adapting their claims, for example to include product by process claims.  The applicant is required to indicate that the claims between the AU and the EP applications sufficiently correspond.

Requirement 3: Australian Examination Request

To proceed under the IP Australia-EPO PPH the applicant must file a request for examination and make a request to expedite examination under the PPH.  The request to proceed under the PPH will often be in the form of a completed PPH request form; however, other formats are acceptable provided the required details are supplied (see below).

Examination under the PPH can only be requested if examination of the application has not commenced, i.e. a first report has not been dispatched.


Documents Required for Participation in the IP Australia-EPO PPH Pilot Program

For participation in the PPH pilot program at IP Australia the applicant has to:

  1. File a request for participation in the PPH pilot program.  The Request Form: Patent Prosecution Highway Pilot Program (P/00/001P (0516)) is available via the IP Australia website at www.ipaustralia.gov.au.
  2. Submit an indication of claims correspondence which is included in the request form.
  3. Submit a copy of:
  • either all the office actions for the corresponding application(s) filed with the EPO containing the patentable/allowable claims that are the basis for the IP Australia-EPO PPH request 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.  

4. Submit a copy of the patentable/allowable claim(s) from the EP application(s) and a translation thereof in English.  

In those instances where the request for participation in the IP Australia-EPO PPH pilot program does not meet all the requirements set forth above, the applicant may be notified of the deficiencies in the request.  The applicant will be allowed to correct deficiencies identified and if not corrected, the application may be taken out of the IP Australia-EPO PPH program.

Supporting Documents

If any of the documents identified in points (3) and (4) above:

a. have already been filed in the AU application prior to the request for participation in the IP Australia-EPO PPH pilot program, it will not be necessary for the applicant to resubmit these documents with the IP Australia-EPO PPH request.
The applicant may simply refer to these documents and indicate in the request for participation in the IP Australia-EPO PPH pilot program when these documents were previously filed in the AU application.

b. are available via Espacenet or PatentScope, the applicant does not need to submit a copy thereof, but has to provide a list of the documents to be retrieved.  Machine translations will be admissible for the documents identified in points (3) and (4).

IP Australia may request applicants to submit a verified translation of the documents identified in points (3) and (4) above if they are insufficient.  If the EP application(s) is (are) unpublished, the applicant must submit the documents identified in points (3) and (4) above upon filing the IP Australia-EPO PPH request.


Processing and Features of IP Australia-EPO PPH Applications

  • Expedited PPH tasks will appear at the top of a section’s PAMS in-tray and will be highlighted in yellow.
  • IP Australia-EPO PPH applications should be examined using the same procedure as for expedited examination on an application where there are FERs on file (see 2.13.4.3 Expedited Examination).
  • The process of providing FERs and citations by COG will follow the normal procedures and all available FERs will be present in the Ecase.
  • Examiners will need to indicate that the application is an accelerated examination under the Patent Prosecution Highway on the ‘Basis of the Report’ screen when creating the examination report in DocGen.  This will create a paragraph in the report identifying that accelerated examination has been requested under the PPH.  
  • IP Australia-EPO PPH applications should always have copies of at least one office action, or ISO/IPEO/IPER/IPRP issued by the EPO on file.  All claims should sufficiently correspond, or be amended to sufficiently correspond, to a claim indicated as allowable or patentable. Sufficient correspondence of claims occurs where the claims are of the same, similar or narrower scope.


Examination Practice

Although requests for examination under the IP Australia-EPO PPH require the EPO to have found at least one claim to be allowable, examiners should consider all grounds of examination.  In particular examiners should have due regard to relevant issues and citations raised in FERs and search results.  Examiners are not precluded from carrying out an original search if warranted.

As indicated above, all claims being examined should sufficiently correspond to a claim examined by the EPO and at least one claim should be indicated as allowable or patentable in an office action or ISO/IPEO/IPER/IPRP issued by the EPO, or fall within the scope of such a claim.  Claims are considered to sufficiently correspond where the claims are of the same, similar or narrower scope.  Claims can be of the same or similar scope and also allow for differences in language and drafting style.

Examiners should use their judgement in determining whether the claims are of the same or similar scope and in determining the extent to which reliance can be placed upon the conclusions of the EPO in accordance with the procedures for using FERs (see 2.1.9 Guidelines for Using IPRPI/IPRPIIs and Other Foreign Examination Reports (FERs) in Examination).  Note that the specification (including the claims) of the PPH application does not need to be the same as the corresponding application examined by the EPO in order to satisfy the requirement that all claims sufficiently correspond to claims indicated as allowable or patentable in an EPO office action. However, where Australian law allows variation in the category of claims, applicants may consider adapting their claims, for example to include product by process claims.


Application Does Not Meet IP Australia-EPO PPH Requirements

  1. If an AU application is filed as an IP Australia-EPO PPH application, but the claims of the AU application are found to be not allowable by the EPO or found to have a scope that is not the same or similar as allowable/accepted claims; or
  2. If an AU application is filed as an IP Australia-EPO PPH application, but the claims of the AU application are examined and/or allowed by IP Australia; or
  3. If an AU application is filed as an IP Australia-EPO PPH application, but the required documents are not provided;

examiners should contact the applicant to seek clarification and inform them that the application does not meet the IP Australia-EPO PPH requirements, or request that the applicant file the required documents.

Where it remains the case that the requirements are not met, examiners are to proceed with examination of the application as a standard expedited examination and adhere to the Customer Service Charter (see Customer Service Charter Timeliness Guidelines).  Examiners should include a note under the Additional Comments section of the examination report that the IP Australia-EPO PPH requirements have not been met.

Examiners may contact the PPH Contact Officer via the MDB-PPBRG-PPH mailbox for any other issues regarding IP Australia-EPO PPH applications.