2.13.4.4 Expedited Examination Under the Global Patent Prosecution Highway

Note: The National Institute of Industrial Property of Chile (INAPI) joined the Global Patent Prosecution Highway (GPPH) on 6 July 2020.

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 GPPH 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 GPPH, examiners should follow the procedures in Application Does Not Meet GPPH Requirements below.

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

In this topic:

Overview

The Global Patent Prosecution Highway (GPPH) is an initiative that allows applicants to expedite the examination process. Under the GPPH, where an applicant receives a ruling from one patent office that at least one claim in an application is allowable, the applicant may then request that another office expedite or accelerate examination of the corresponding claims in a corresponding application.

The initial Patent Prosecution Highway (PPH) pilot program between IP Australia and the USPTO commenced on 14 April 2008 and was for national applications only (national work products). It was later agreed to expand the pilot program to include work carried out under the PCT (PCT work products), commencing 24 January 2011. The pilot program was further expanded on 15 July 2011 to allow for a PPH request to be based on the examination of a corresponding application in the USPTO, regardless of where its priority application was filed. Thus, the US application could be based on a first filing in another office such as Canada, Norway or Australia, provided that both the Australian and US applications claimed priority under the Paris Convention from a common priority document.

With effect from 6 January 2014, the pilot PPH program between IP Australia and the USPTO has been superseded by an agreement between IP Australia and 25 other patent offices. The program is now known as the GPPH. IP Australia and the participating offices will continue to evaluate the results of the GPPH pilot program to determine if and how the program should be fully implemented.

The offices participating in the GPPH are known as Offices of Earlier Examination (OEE) and are listed in the table below:

Note: The European Patent Office (EPO) is not a part of the GPPH program and has an independent PPH pilot program with IP Australia.  For applications expedited under the IP Australia-EPO PPH where the EPO is the OEE, examiners should follow the procedures outlined in 2.13.4.5 Expedited Examination Under the IP Australia-European Patent Office Patent Prosecution Highway.

Requirements for Accelerated Examination Under the GPPH Pilot Program

There are three requirements for accelerated examination under the GPPH:

Requirement 1: The AU Application Must be Appropriately Associated With Either an Overseas Application (National Work Products) or a PCT Application (PCT Work Products)

1A. National Work Products

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

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

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

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

iii. The AU application and overseas 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 overseas 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 ISA or IPEA has indicated to be allowable/patentable in a written opinion or examination report. The ISA or IPEA must have been one of the OEE.

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 GPPH 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 GPPH Requirements below.

Requirement 2: Corresponding Australian Claims

All claims in the AU application must sufficiently correspond or be amended to sufficiently correspond to one or more of those allowable/patentable claims of the overseas or PCT application examined by the OEE.

Claims shall be considered to “sufficiently correspond” where, accounting for differences due to translations and claim format, the claims are of the same, similar or narrower scope as the claims indicated as allowable/patentable. In this regard, a claim that is narrow in scope occurs when the claim is amended to be further limited by an additional feature that is disclosed 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 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.

Requirement 3: Australian Examination Request

To proceed under the GPPH the applicant must file a request for examination and make a request to expedite examination under the GPPH.  The request to proceed under the GPPH 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 GPPH can only be requested if examination of the application has not commenced, i.e. a first report has not been dispatched.

Examiners should contact the PPH Contact Officer via the MDB-PPBRG-PPH mailbox where an application appears to be a GPPH application, but does not satisfy the requirements for accelerated examination under the GPPH, or does not include the required documentation as indicated below.

Documentation Required to Support a Request for Accelerated Examination Under the GPPH Pilot Program

The following documentation is required:

1. A copy of one or more office actions issued by the OEE, or ISO/IPEO/IPER/IPRP issued by the ISA/IPEA where they are also an OEE, on the corresponding overseas or PCT application that indicates the allowability/patentability of the claims being examined.
   An indication of allowable/patentable claims follows substantive examination, including consideration of novelty and inventive step, by the OEE.  Acceptable office actions include the following:

2. A copy of the claims examined by the OEE and, where appropriate, copies of subsequent amended claims, found to be allowable/patentable.

3. An indication of the relationship between the AU claims and those of the OEE application.

The indication can be in the form of a completed claim correspondence table (in the PPH request form) showing the relationship between the claims of AU application and the claims of the corresponding overseas application considered allowable/patentable by the OEE; or

• the indication may be in the form of a statement that all the claims of the AU application correlate with the equivalent claims examined by the OEE; or
• the applicant may indicate the relationship in more general terms, for example “Claims 1 – 20 as proposed to be amended correspond to claims 63 – 83 of the US application”.

Sufficient correspondence of claims occurs where the claims are of the same, similar or narrower scope (see Requirement 2 above).

The applicant can either provide the office actions and copy of the claims with the request for examination under the GPPH, or request that IP Australia obtain the documents from the OEE’s Dossier Access System (DAS).  

Examples of the OEE’s DAS include the USPTO’s Public PAIR system, UKIPO’s IPSUM system and WIPO’s Patentscope.  Further examples are listed in the table below and links are provided on the Patent Examination Workbench.

The applicant must clearly identify the relevant information (document description and date) of the office actions and claims to be retrieved from the DAS on the PPH request form.

Note: Applicants may also file citations and translations of citations as part of the supporting documentation to allow for prompt consideration if they so desire.

Processing and Features of GPPH Applications

• Expedited GPPH tasks will appear at the top of a section’s PAMS in-tray and will be highlighted in yellow.
• A comment in the PAMS comment field will indicate that the applicant has requested accelerated examination under the GPPH.
• GPPH 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.  
• GPPH applications should always have copies of at least one office action, or ISO/IPEO/IPER/IPRP issued by an OEE 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 GPPH require the OEE 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 OEE and at least one claim should be indicated as allowable or patentable in an office action or ISO/IPEO/IPER/IPRP issued by the OEE, 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.

For example, a method of treatment claim considered allowable in the USPTO could have a corresponding Australian claim in the form of a use claim or Swiss-type claim which could be considered of the same or similar scope.

Similarly, a US claim directed to a method of using an apparatus could have a similar scope to an Australian claim directed to an apparatus when used for the same purpose.

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 OEE 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 GPPH application does not need to be the same as the corresponding application examined by the OEE in order to satisfy the requirement that all claims sufficiently correspond to claims indicated as allowable or patentable in an OEE office action.

Application Does Not Meet GPPH Requirements

1. If an AU application is filed as a GPPH application, but the claims of the AU application are found to be not allowable by an OEE 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 a GPPH application, but the claims of the AU application are examined and/or allowed by IP Australia or another patent office which is not an OEE (for example CN, as China is not a part of the GPPH); or
3. If an AU application is filed as a GPPH 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 GPPH 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 GPPH requirements have not been met.

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