On 1 July 2019, IP Australia and the European Patent Office (EPO) extended the Patent Prosecution Highway (PPH) pilot program after the initial pilot expired on 30 June 2019. The current program will run for a further three years, ending on 30 June 2022.

Accelerating patent examinations

Under the IP Australia-EPO Patent Prosecution Highway, an applicant who receives a ruling that at least one claim has been allowed in one jurisdiction may request that examination of a corresponding application be accelerated in the other jurisdiction. The program enables applicants to obtain a granted patent faster than would otherwise be the case under ordinary examination.

The claims for which examination under the PPH is requested must "sufficiently correspond" to those that have been allowed in the other jurisdiction. This generally means that, accounting for differences due to claim format requirements and drafting styles, the claims to be examined should have the same, similar or narrower scope as the allowed claims of the corresponding application.

IP Australia also participates in the Global Patent Prosecution Highway, which provides a similar mechanism of accelerating examination and includes 25 other patent offices including those of the US, Canada, Japan and Korea.

Turbo-charging patent examinations

Applicants can also request expedited examination in Australia using a mechanism that is distinct from the PPH. The patent office will grant such a request if it is satisfied that doing so is in the public interest or there are special circumstances that make expedited examination desirable. Inventions in the "green technology" space are often considered to be in the public interest, while infringement proceedings or commercial considerations will typically satisfy the patent office that expedited examination is desirable.

Under this mechanism of expedited examination, an examination report should issue within four to eight weeks of making a request. If the examination report indicates that at least one claim is allowable, it may form the basis of a PPH request in another jurisdiction. Australia can therefore act as the starting point for accelerating examination globally.