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Is the Global Patent Prosecution Highway the best way to go? – 6 January 2014
The Global Patent Prosecution Highway (GPPH) came into effect today, 6 January 2014. It gives anyone interested in patent protection in multiple countries the opportunity to expedite the examination process.
The following patent offices are participating in the GPPH:
- Australian Patent Office
- Canadian Intellectual Property Office
- Danish Patent and Trademark Office
- National Board of Patents and Registration of Finland
- Japan Patent Office
- Korean Intellectual Property Office
- Nordic Patent Institute
- Norwegian Industrial Property Office
- Portuguese Institute of Industrial Property
- Russian Federal Service for Intellectual Property
- Spanish Patent and Trademark Office
- United Kingdom Intellectual Property Office
- United States Patent and Trademark Office
Under the GPPH, if one of these patent offices considers a claim (definition of coverage) allowable, expedited examination of any sufficiently related patent applications before the other patent offices can be requested.
The commentary thus far has hailed the GPPH as a significant positive for Australian patent applicants. But is it really? As follows, in our view, expedition is often not the best approach and there may be other disadvantages for Australians seeking expedition under the GPPH.
First and foremost, generally speaking, the damages payable for patent infringement are calculated from when the patent application is first published, rather than when examination is completed.
Secondly, as counterintuitive as it seems, a pending patent application has advantages over a granted standard patent. As in our recent article regarding extraordinary patent office delays:
“[An] extended period of pendency is of benefit to patentees. It defers the costs of examination, acceptance and grant, and preserves the opportunity to extend the coverage of the patent application. Once an Australian standard patent is granted, its claims cannot be amended to take in subject matter outside of the scope of the granted claims (nor can a divisional patent application be filed to claim that subject matter).”
Thirdly, the GPPH is not required to urgently make a pending Australian standard patent application enforceable. If there is a special need for expedition, such as a potential infringement in the market, expedited examination can be requested (regardless of the GPPH). And more practically, when enforceable rights are urgently required in connection with a pending standard patent application, it is now routine to file for an innovation patent formally linked to the standard patent application. Such innovation patents are examined expeditiously as a matter of course.
Our article “Using the patent system to gain an unfair advantage - September 2013” (links to an external web site) discusses how these three factors together create a broad scope of potential patent rights. This broad scope of potential rights would be much reduced once a patent has been granted after filing a request under the GPPH.
Fourthly, for examination of an Australian patent application to be accelerated under the GPPH, all of its claims must “sufficiently correspond” to a claim allowed by the other patent office. This requires that the Australian claims are in substance no broader than the allowed claim.
Australia has traditionally had relatively lenient patentability requirements, meaning that broader claims may be allowable in Australia than in other jurisdictions, so that narrowing the scope of the claims to match the allowed claim may simply be unnecessarily giving away potentially valuable Australian patent coverage.
Significant changes to Australian patent law came into effect on 15 April 2013. These changes were intended to raise Australia’s patentability requirements. Whilst the practical effect of these changes remains to be seen, we seriously doubt that the requirements will be elevated beyond the requirements of other jurisdictions such as the US, so this fourth point will likely remain valid.
Whilst the Global Patent Prosecution Highway may allow you to speed up the patent application process, it will often be better to take a slower road.
Mechanical Engineer & Patent Attorney
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