Now that we have made it past the March 16, 2013 effective date of the first-inventor-to-file provisions of the America Invents Act, it is time to turn our attention to Australia, and the April 15, 2013 effective date of the Intellectual Property Laws Amendment (Raising the Bar) Act.
The Australian Patent Office (IP Australia) recently implemented changes to its examination procedures for divisional applications that are designed to promote “prompt resolution” of their status, “particularly where the claimed subject matter of the divisional application is the same as its parent.” While resolving uncertainty is an important goal, the new procedures add a new layer of complexity that may hit non-Australian applicants particularly hard.
The USPTO has announced that starting January 24, 2011, the Patent Proecution Highway between the USPTO and Australia will expand to include positive patentability determinations made under the PCT. While the details of the this PCT program have not yet been promulgated, I assume they will be similar to those in place for the current PCT-PPH programs.
Patent Prosecution Highways – Express Lanes To Examination
As I explained in my first detailed article on PPH programs, each PPH offers “fast tracked” examination in a “second” patent office (Office of Second Filing, OSF) for claims that have been determined to be patentable by a “first” patent office (Office of First Filing, OFF).
For the non-PCT (direct) PPH programs, the OFF is the Patent Office of the priority application country. If there is no priority application, the OFF can be the first Patent Office to issue a favorable patentability ruling. But, if the priority application was filed in one country (such as France) and a favorable patentability ruling is first received from another patent office (such as Australia), it is not possible to use the favorable ruling to fast-track examination in the U.S.
The USPTO has PPH agreements with fourteen patent offices:
Australia, Austria, Canada, Denmark, Europe, Finland, Germany, Hungary, Japan, Korea, Russia, Singapore, Spain, and United Kingdom
The existing PCT-PPH programs are somewhat less restrictive, and do not base eligibility on the presence or absence of a specific priority claim:
[A]n applicant receiving a written opinion or an international preliminary examination report from [a participating patent office] or the USPTO that at least one claim in a PCT application has novelty, inventive step, and industrial applicability may request that the other office fast track the examination of corresponding claims in corresponding applications.
With the new Australian PCT-PPH program, the USPTO will have PCT-PPH agreements with eight patent offices:
Australia, Austria, Europe, Finland, Japan, Korea, Russia, and Spain.
Advantages of the PCT-PPH Programs
The PCT-PPH programs offer several advantages over the direct PPH programs.
First, the PCT-PPH programs do not have the restrictive priority requirements that apply to the other PPH programs. These requirements exclude a number of applications that otherwise might have been able to benefit, and prevent the USPTO from reusing the work of another patent office simply because it is not the office of the application’s priority country.
Second, the PCT-PPH programs may be available earlier in an application’s lifetime, because a PCT written opinion or international preliminary examination report is likely to be issued before a patent office makes a patentability determination. In such cases, an applicant may be able to use the PPH to avoid months or years of waiting for examination.
Third, although the PPH programs still are based on bilateral agreements, PCT-PPH programs may exist between multiple patent offices. That means that a favorable patentability finding from the EPO PCT searching/examination authority could be used to fast-track examination in multiple countries, such as the U.S., Japan, and Korea.
Disadvantages of the PCT-PPH Programs
The PPH programs require the applicant to amend the claims to correspond to those determined to be patentable by the OSF. In the context of PCT-PPH programs, this means that only claims found to be patentable initially (in the written opinion), or after only one response (in the international preliminary examination report) can be presented in a PCT-PPH application. While other claims could be pursued in a continuation or divisional application, applicants may not want to bear the expense of prosecuting and maintaining separate applications and patents.
Should You Take The Highway?
While I still am not convinced that the PPH programs will achieve the USPTO’s goals of improving the quality and efficiency of patent examination and reducing the USPTO’s workload, I do think that it is something that applicants should consider when they receive an indication of patentability in an OFF or PCT written opinion or international preliminary examination report. With the average wait to a first office action from the USPTO still hovering at 24 months, many applicants are interested in knowing about all possible strategies for obtaining examination sooner rather than later.