Examination under the Patent Prosecution Highway

The Patent Prosecution Highway (PPH) is an initiative whereby an applicant may request accelerated examination in one office based on the allowance of at least one claim in a corresponding application in another office.

IP Australia and the United States Patent and Trademark Office (USPTO) commenced a PPH pilot on 14 April 2008. Under the PPH pilot, an applicant receiving a ruling from either the USPTO or IP Australia that at least one claim in a national application is allowable, could request that the other office fast track the examination of corresponding applications.

The USPTO and IP Australia initially expanded the pilot from 24 January 2011 to include work carried out under the Patent Cooperation Treaty (PCT), referred to as the PCT-PPH pilot. Under the PCT-PPH pilot, an applicant may request accelerated examination based on a written opinion or an examination report (prepared by IP Australia or USPTO as ISA/IPEA) for a corresponding PCT application that indicates at least one claim has novelty, inventive step, and industrial applicability.

In addition, IP Australia and the USPTO have now agreed to a further expansion of the PPH pilot program with effect from 15 July 2011 for up to 12 months until 14 July 2012. This will improve the PPH program by making it available to a wider range of applicants than the previous PPH program.

Under this pilot, a PPH request to IP Australia can be based on examination of a corresponding application in the USPTO, regardless of where its priority application was filed. This will mean that the US application could be based on first filing in another Office such as Canada, Norway or Australia provided that both the Australian and US applications have the same priority date.

IP Australia and the USPTO will evaluate the results of the PPH program to determine if and how it will continue after the trial period.

This further expansion of the PPH program is part of the continued focus on strengthening international cooperation between overseas patent offices and ensuring maximum work-sharing potential.

Official Notices provide information about the PPH pilot program.