Fast-track patent agreement between EPO and Australia

The European Patent Office (EPO) and the Intellectual Property Office of Australia have recently launched a bilateral Patent Prosecution Highway (PPH) program which should allow accelerated prosecution of certain patent applications in Europe and Australia. This pilot program will run for an initial term of 3 years.

PPH programs generally allow one or more national or regional intellectual property offices to reuse the work product of another office in order to speed up examination. In particular, where the claims of an application have been found allowable in one jurisdiction, faster grant of a patent in relation to the same or similar claims in a corresponding application in another jurisdiction may be possible.

PPH programs are becoming increasingly popular because, for some applicants, the standard patent examination procedure can appear to be very slow. This is particularly apparent when compared to other IP rights, such as trade marks or registered designs, which may proceed to registration within a matter of months. In Europe, for example, it commonly takes around three to five years for a patent application to proceed to either grant or final refusal. Indeed, many European applications last even longer, with around 5% of applications taking about 12 years until completion.

The majority of applicants are happy with this slow pace of examination because it allows the costs of prosecution to be spread over many years. It can also keep potentially weaker applications pending for longer, acting as a deterrent to competitors.

Nevertheless, there are times when fast grant of a patent is desired. For example, this may be important if the applicant knows of an infringer and wishes to take legal action swiftly. Alternatively, a granted patent can be a useful tool for leveraging investment in a company.

There are already several specific PPH programs for applicants to choose from. Under the PCT-PPH program, for example, accelerated prosecution in many countries may be based on a positive written opinion achieved during the international phase of an international (PCT) patent application. The IP5 PPH program also allows acceleration of applications relating to claims allowed by one of the European, Japanese, Korean, Chinese and US patent offices. A similar program, the Global PPH, operates on a larger scale and covers countries such as Australia, Canada, Germany, Japan, Korea, the UK and the US.

The EPO does not currently take part in the GPPH program and is instead negotiating bilateral agreements with individual countries, as with Australia. For example, the EPO began similar bilateral PPH programs with Canada, Israel, Mexico and Singapore in 2015.