IP Australia is committed to building an effective and accessible IP rights system for protecting innovations in Australia. Making a significant impact on IP strategies of patent owners, IP Australia has recently launched an additional Patent Prosecution Highway (PPH) pilot program with the EPO, enlarging its diverse portfolio of Global Patent Prosecution Highway agreements. While Australia already has fast-track examination procedures within the frame of GPPH program, now the applicants have access to quicker grants and reduced costs using patents granted by EPO and PPO (Poland) with the same priority date before substantive examination in Australia has begun, and conversely.

Main conditions for submitting a PPH request to the IP Australia

• the corresponding applications must share the earliest priority;
• claims of the Australian application must sufficiently correspond to the claims identified as patentable by the Office of Earlier Examination (OEE) by having the same or similar (narrower) scope of protection;
• at least one of the corresponding applications must have one or more claims determined patentable/allowable;
• substantive examination on the Australian application has not yet begun.

Substantive examination is considered to have begun when IP Australia issues a first office action. However, as this could occur at any time after the request for examination had been submitted it is highly recommended to proceed with PPH request without any delay.

The latest work product, which indicates the claims to be patentable/allowable, must be submitted together with its English translation, if not in English. During examination, if the quality of the machine translation is not considered adequate a further verified translation may be requested.

When submitting international work product, the results of International Search Report (ISR) alone are not enough for filing a request under the PCT-PPH. The written opinion of the International Search Authority (WO/ISA) or International Preliminary Report on Patentability (IPER) must be provided. If IP Australia has prepared the international work product, the applicant should consider filing a conventional request for expedited examination in Australia as PPH request is not applicable in this case.

Once a request to participate in PPH program is filed, examination will be carried out in accelerated manner. On average, IP Australia issues the first examination report for a PPH application within next two months.

 As with a conventional request for expedited examination, no government fees are payable when requesting expedited examination under the PPH.

In the meantime, a request for expedited examination should be supported with a reason, but unlike the requirement for a petition to make special in the United States, it may be a standard reason such as potential infringement, licensing and/or commercial reasons, etc., which IP Australia indicates as acceptable.

Another measure to ensure examination occurs at an earlier date is to request examination prior to an official direction to request examination issued by IP Australia.