IP Practitioners — Get Ready for the Global Patent Prosecution Highway!

Recently, in an effort to expedite patent prosecution internationally, thirteen countries, including the United States, have established a Global Patent Prosecution Highway (“GPPH”):

  • Australia (IP)
  • Canada (CIPO)
  • Denmark (DKPTO)
  • Finland (NBPR)
  • Japan (JPO)
  • Korea (KIPO)
  • Nordic Patent Institute (NPI)
  • Norwegian Patent Office (NIPO)
  • Portugal (INPI)
  • Russia (ROSPATENT)
  • Spain (SPTO)
  • United Kingdom (IPO)
  • USA (USPTO)

Unfortunately, the European Patent Office has not signed on to the GPPH yet.

Expediting patent prosecution by means of the Patent Prosecution Highway (“PPH”) is not new and has been around for several years. Under the PPH, the examination process is expedited for corresponding applications filed in participating intellectual property offices. For example, a patent applicant who has received a ruling from a first office that at least one claim is patentable may request that the second office fast track the examination of corresponding claims in corresponding applications filed in the second office. As a result, applicants can obtain patents faster and more efficiently. Since May 25, 2010, the United States Patent & Trademark Office (“USPTO”) has even eliminated the fee for the petition to make special under the PPH programs. Other benefits to PPH include accelerated examination, greater efficiency, decreased costs of prosecution, and reduced pendency.

The GPPH will simplify the entire program for all users with a single form and a common set of guidelines for all major patent offices which are engaged with the USPTO in the PPH process. Patent applicants are able to use the GPPH as long as one claim is approved by a first patent office. For more information about the GPPH please see these links:

http://www.uspto.gov/patents/init_events/pph/index.jsp
http://www.uspto.gov/patents/init_events/pph/pphbrochure.pdf

We, at Gibbons, will continue to keep you informed about the latest developments concerning the Global Patent Prosecution Highway.

Estelle J. Tsevdos is a Director in the Gibbons Intellectual Property Department. Jillian A. Centanni, a former Associate in the Gibbons Intellectual Property Department, co-authored this post.
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