IPONZ Joins Global Patent Prosecution Highway

On the 6th July 2017 IPONZ joined the Global Patent Prosecution Highway (GPPH) pilot program.

The GPPH pilot program is already composed of the IPO’s of Australia, Austria, Canada, Denmark, Estonia, Finland, Germany, Hungary, Iceland, Israel, Japan, Norway, Poland, Portugal, Russia, Singapore, South Korea, Spain, Sweden, United Kingdom, United States of America and the Nordic Patent Institute.

The GPPH pilot program uses the below set of qualifying requirements, under which patent applicants can request accelerated examination of a patent application in other GPPH IPO’s after at least one claim of a corresponding application has been accepted in an IPO of another GPPH IPO.

1. The applications before the Office of Earlier Examination (OEE) and the Office of Later Examination (OLE) have the same earliest date (which may be the priority date or the filing date).
2. Following substantive examination the OEE has found at least one claim to be allowable. The indication that a claim is allowable will be provided as an explicit statement in any substantive work product from the OEE. This includes claim(s) determined as novel, inventive and industrially applicable in PCT work products.
3. All claims presented for examination under the GPPH pilot must sufficiently correspond to one or more of the claims found allowable by the OEE.
4. The OLE has not begun substantive examination of the application. However, OLE’s may still choose to allow GPPH requests filed after examination of the OLE application has begun depending on the particular circumstances and needs of the OLE and its stakeholders. ​
5. A request for substantive examination must have been filed at the OLE, either at the time of the GPPH request or previously.

Participating IPO’s may require that the OLE application is open to the public and require a fee for GPPH acceleration. Participating IPO’s acting as an OLE can also specify less, but not more, criteria in order for the GPPH to be used.

As the OLE IPONZ applies criteria (1), (2) and (3) and no additional fee is applied. It will consider a GPPH request as a request for substantive examination if that has not already been made, and allows the GPPH to be requested between filing and acceptance. Where New Zealand has been entered late via PCT National Phase restoration will have to be achieved before a GPPH request can be made. However, it can be made at the time of filing a late convention application, provided that the claim to the earliest convention priority or filing date is allowed.

IPONZ requires the following documentation with a request under the GPPH:

1. A copy of the report or action issued by the OEE which expressly identifies the patentable claims.
2. A copy of the claim set which includes the patentable claim(s) of the OEE application.
3. A claims correspondence table which sets out the patentable claim(s) of the OEE application and identifies the corresponding claim(s) to be examined by IPONZ.

Author: Quinn Miller

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