As you can see from this graph, the numbers of applications are staggering, and the growth in recent years has been huge. The meteoric rise in filings from China, and to an extent India, reflects their rapid industrialisation, and movement from nations that only absorb technology to those that develop and export their own IP. There are estimated to be 6.7 million patents in force around the world, and around 1.9 million new applications were filed internationally in 2009.
An interesting fact is that as a consequence of the use of the European
patent system, the Australian patent office now handles more new patent applications
than France and the UK.
In an increasingly multilateral and
interconnected world, patent officials are spending more and more time
examining exactly the same patent applications as have been filed in each of
the other 4 ‘big 5’ offices. There has been a great deal of work done between
the offices to enable greater recognition of work by the other offices, so as
to reduce the extent of duplication (quintlication!) and unnecessary re-work.
Even modest gains on each case can create significant increases in overall
efficiency and reduce the time application have to wait to be examined.
Patent Prosecution Highway
One measure has been the adoption of the
Patent Prosecution Highway (PPH) process. This started as a set of bilateral
agreements between the USPTO and a few other national patent offices, which has
grown to bilateral arrangements between the USPTO and 20 other national
offices. The precise nature of the agreements vary, but they are all concerned
with allowing improved speed of processing from applicants.
More recently, this
had spread to co-operation between other offices. The Japanese and Chinese
patent offices have just announced that they have established their own PPH
process. This will involve, in addition to examination co-operation, the
exchange of English language abstracts of their respective patent collections,
to assist them both in better searches and examination.
Advantages for Australian applicants
For Australian applicants, the PPH
arrangements provide a real opportunity. Australia has a very liberal process
for allowing expedited examination. For a small additional cost, it is possible
to have examination occur quickly, generally within two months. Assuming a
favourable examination outcome, and prompt action, the application can be
accepted within about 4 months from filing. The favourable outcome can then be
used to invoke the PPH arrangements with the US. Again, assuming that the
examination outcome is generally favourable (for at least some claims) then a
US issued patent can be obtained within 6 or 7 months.
In the normal course,
this would be closer to 3 years or longer. As is always the case in the US, it
is possible to allow some claims to proceed to issue, and file a continuation
to pursue broader claims, if appropriate.
Early grant in the US is not always an
advantage, but depending upon the business strategy, it can be extremely
valuable. For example, transforming a pending Australian application into
granted patents in the US and Europe can be very significant for potential
investors, as it takes a probability into a reality.
A mechanism for rapid examination in the
US for Foreign applicants
Recently, the PPH agreement between the US
and Australia has been amended, so as to include any cases examined by the
respective offices, including cases that claim priority from another country.
This means that applicants from other countries (including the US) can use the
Australian expedited examination process, obtain acceptance, and then file in
the US and use the PPH process. We offer very cost effective inclusive pricing
for expedited examination, please let us know if this is of interest and we
will be happy to provide more detail.
by Peter Franke
