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1 June 2014Patents

Highway to heaven? The global approach to fast patent prosecution

Obtaining multinational protection for an invention or patent is a mouth-watering prospect for inventors; even more so when the process for considering a patent’s claims is a speedy one.

Inventions can be protected quickly across borders, without the need to worry about a separate and arduous process in each jurisdiction.

It was this theory that led the patent offices of the US and Japan to join forces in 2006. The pair launched the Patent Prosecution Highway (PPH), allowing applicants to request accelerated examination at one of the two patent offices as long as their claims had been previously deemed acceptable by the other.

By November last year, membership of the PPH scheme had expanded to 30 countries and their respective IP offices. That month, an expansion of the scheme called the Global Patent Prosecution Highway (GPPH), was announced by the Japan Patent Office (JPO).

The GPPH simplifies the existing system of numerous bilateral agreements, replacing it with a single arrangement that applicants can use across multiple jurisdictions.

As Yoshifumi Saeki, senior vice president at Shiga International Patent Office in Tokyo, explains, the system is an extension of the existing agreement that was highly commended by the participating offices.

“The bilateral PPH received high commendation from IP offices in member countries as it enabled applicants to obtain patent rights promptly,” Saeki says.

“GPPH is highly regarded as an advanced PPH programme that enables participating countries to apply to all members of the PPH programme.”

As WIPR went to press, 17 out of the 30 offices and jurisdictions in the PPH had joined the extended GPPH.

They are: the Canadian IP Office, IP Australia, Danish Patent and Trademark Office, Hungarian IP Office, Icelandic Patent Office, Israel Patent Office, Finnish Patent Office, JPO, Korean IP Office, Nordic Patent Institute, Norwegian Industrial Property Office, Portuguese Institute of Industrial Property, Russian Federal Service for IP, Spanish Patent and Trademark Office, Swedish Patent and Registration Office, UK IP Office (UKIPO) and the US Patent and Trademark Office (USPTO).

The GPPH’s arrival was universally welcomed by the patent offices involved.

The UKIPO said the scheme would “simplify” the process for applicants and help reduce the time and cost of seeking patent protection in “key global markets”, while the USPTO said there were “countless strategic possibilities” for IP owners.

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