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Using Australia as a strategy for obtaining early grant in the USA (and elsewhere)

Published on: 09 December 2013
by Mr. John Walker, Patent & Trademark Attorney at Dennemeyer & Associates, Australia

Where applicants have included Australia as part of their global filing strategy, this may also present an opportunity to use Australia to “fast – track” grant in other jurisdictions (including USA).

General – expedited examination

For such foreign patent applicants in Australia, requesting expedited examination can form the basis of such a strategy.

Expedited examination can be requested without incurring any additional official fees. This fee for requesting examination (assuming no Australian IPER report has been issued) is AUD490 (from 1 July 2012).

Further, a request for expedited examination in Australia only requires a simple explanation of reasons for the request. Generally, requiring early grant for commercial purposes is suitable for satisfying this expedited examination requirement.

Using expedited examination can result in obtaining a sealed patent in Australia within about seven months from requesting expedited examination. Depending on when the Australian application is filed, this can occur before any PCT filing deadline.

Compared to the USA, this Australian approach compares favourably with its early examination approaches. USA patent applicants have two options – Prioritized Examination (PE) and Accelerated Examination (AE). The difference between these approaches is outside the scope of this article. The cost of filing under the PE approach is around USD6500 and the AE approach about USD1500. However, the cost of the AE approach is increased significantly by the need to generate various pre-examination search documents and support documents.

Expedited examination and PPH

In Australia, use of this expedited examination strategy in conjunction with Patent Prosecution Highway (PPH) arrangements between IP Australia and other IP Offices can provide applicants with significant benefits.

In short, the PPH is an initiative whereby an applicant may request accelerated examination in one patent office based on the allowance of at least one claim in a corresponding application in another office.

Since 2008, IP Australia and the USPTO have been participating in a bilateral PPH Pilot Program. However, from 6 January 2014, applicants will be able to participate in the Global PPH Pilot Program. The Global PPH involves 13 participating offices, including IP Australia, USPTO, JPO, CIPO, and KIPO.

Under this Pilot, an applicant receiving a ruling from a participating office (such as USPTO or IP Australia) that at least one claim in a national application is allowable, may request the other office fast-track examination of the corresponding application in participating jurisdictions.

The strategy in summary

Following filing of the priority application in the home country, it is recommended to file an application in Australia and at the same time request expedited examination. This might be undertaken – for example – three months after the earliest priority date. Normally, IP Australia will issue a First Report within one – three months (say two months). By rapidly addressing any objections, acceptance (of at least one claim) can be obtained in a further two months.

At this stage, the applicant can then file in the USA and request early PPH examination. Similarly, the applicant can file a PCT application at the 12 month convention deadline, and depending on its jurisdiction, designate another office (for example EPO) as the International Searching Authority. Using this approach means that the applicant will have search results from at least three offices – IP Australia, USPTO and another (say EPO). This can assist with Article 34 claim amendments under the International Application, and the applicant has a clearer position when deciding on National Phase Entry.

Under this approach, applicants normally not filing in Australia might consider the advantages of this wider strategic opportunity. Also, for applicants with a specific interest in Australia, this strategy can provide a strong outcome for Australia but with additional benefits in other jurisdictions.

Note: The content of this Update is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances. Please address your specific questions about your circumstances to Dennemeyer & Associates in Australia at info@dennemeyer-law.com.