Patent Prosecution Highway pilot program between IP Australia and the USPTO extended and expanded

Since 14 April 2008, IP Australia and the USPTO have been trailing a program called the Patent Prosecution Highway (PPH). The underlying aspect of the program is to allow accelerated or expedited examination of a patent application in either Australia or USA based upon a corresponding application in the other country which has at least one formally allowed claim.

The pilot was initially restricted to only patent applications which were originating in either Australia or the USA. In other words, applications having a priority claim from a country other than Australia or USA were excluded from the program. By practical effect, this tended to exclude the program from non-US and non-Australian applicants.

Since, January 2011, the program was expanded to include applications coming from the PCT system. Again, though, only PCT applications having originated from Australia and USA and having either of these countries as the International Searching/Examination Authority were eligible for the PPH program.

The PPH program has now been extended for another 12 months, which commenced on 15 July 2011. However, the extended program has now been expanded so as to be less restrictive on what constitutes eligible applications. Now the requirement of origin has been removed so that any Australian and US patent application will be eligible regardless of country of priority claim. In effect, this has now opened the door for the program to any applicant having eligible corresponding US and Australian patent applications.




by Simon Ellis

EMDG's - something from the Government that really can help

Export market development grants (EMDG's) are a long running Federal Government program designed to assist new exporters.They provide a grant of up to 50% of expenses incurred in relation to launching and developing export markets, covering expenses such as:

Overseas promotion and travel costs

Trade fairs

 Marketing visits

Promotional literature and advertising

Visits from overseas buyer

Intellectual property registration and insurance costs

The grants are available on the basis of funds being spent and then claimed.There are a set of detailed criteria for eligibility, mainly to prevent any rorting of the system, but any Australian resident IP developer or manufacturer is very likely to be eligible.There are caps on the maximum  and minimum amount that can be claimed, and on the size of business ( turnover under $50  million).

As a bonus, in the first year you can claim expenses back for the last two tax years, which could be a great head start for any emerging exporter.

Intellectual property expenses which are allowed include those which relate to registration of patents, trade marks, designs, plant breeder’s rights, and copyright. It does not cover expenses relating to Australia or New Zealand, but it does cover the costs of  seeking protection in other countries, including your Australian attorney’s fees, official fees and foreign attorney costs.

For more information, contact us or go to http://www.austrade.gov.au/What-Is-EMDG/default.aspx.

One final tip – claims for the 2010/11 year are now open, and if you get in early, your claims will also be paid early.

Peter Franke