One of the keys to a faster, more efficient and less repetitive international patent system is for various patent offices to better use the work of their peers. The old paradigm is that each patent office is an island, and behaves as if the same invention had never been examined by any other patent office, starting at the beginning and working through to the end, regardless of the work done elsewhere.
A major change was the first patent prosecution highway (PPH) agreements reached by the USPTO with various patent offices, including IP Australia. In essence, if you had a final decision from IP Australia to allow at least one claim, and the claims in the US matched, you can go to the front of the examination queue. By using this with expedited examination in Australia, we have been able for several clients to achieve grant of a US patent in less than a year from the first Australian filing. While this is not the best strategy for everyone, in the case of a company seeking funding based on its IP, a granted US patent is a lot more valuable than an application.
The new scheme will allow this process to occur with 12 other patent offices, including Japan, Korea, US, Canada, the UK, Spain, Russia, Denmark, Norway, Portugal, Nordic Patent Institute, and Finland. It is likely that other countries and regional offices will join. While at this stage this is a pilot program, it is open to Australian applicants to apply to use the scheme in those patent offices after 6 January 2014. For countries that are notoriously slow, for example Japan, this could be a very great advantage. This is no guarantee of a patent, or of any preferential treatment in the substantive outcome. However, it is a way to accelerate consideration where that is going to be helpful.
Please contact us for a discussion if you think this program would be of interest.
by Peter Franke
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