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New UK-Japanese 'Patent Prosecution Highway'
Is there a quicker, cheaper way to gain a granted patent in the UK or Japan? One of the key recommendations of the Gowers Review of IP in the UK, which we reported here was that the UK Intellectual Property Office (UK-IPO) should pursue work sharing arrangements with other patent offices with the aim of minimising duplication of effort, thereby reducing the cost and time required to obtain patent rights. A few other national offices have already begun collaborating in this way, notably the Japanese Patent Office (JPO) and US Patent and Trademark Office (USPTO) with their “Patent Prosecution Highway” (PPH). Following their success, the UK-IPO has now taken up Andrew Gowers' challenge, launching a 12-month pilot PPH scheme with the JPO on 2 July 2007.
The scheme does not provide a “rubber stamp” route to grant in one office where the other office has found the claimed invention to be patentable, and the claim set need not be identical for the scheme to apply. Rather, the PPH provides a form of accelerated examination. The claims will still be reviewed for compliance with the country's own patent laws, which means that different claim formats appropriate to the national practice can be included in the application, such as omnibus claims in the UK. Nevertheless, the examiner will look at the comments made in relation to substantive matters (particularly novelty and inventive step) in the search and examination reports of the other office, and use these as an aid to come to their own opinion more quickly.
Both the JPO and the UK-IPO do have existing means of speeding up prosecution (such as requesting combined search and examination in the UK). What the PPH provides is the potential to accelerate the procedure and reduce costs even further in one office when a favourable outcome has already been achieved in the other office.
However, it should be noted that there are limitations to the applicability of the scheme: the favourable outcome must have been achieved in the office that handled the priority application (although not necessarily for the priority application itself).
Please contact us if you would like further details of the scheme or if you would like to discuss the options for a particular case.
