Born to be trialed

The Global Patent Prosecution Highway pilot was launched nearly three years ago, but how has the trial fared?

The Global Patent Prosecution Highway (GPPH) was launched on 6 January 2014 with the express intent to allow patent applicants to request accelerated examination at any and all patent offices involved in the pilot programme.

As of 6 July 2015, 21 patent offices have joined the GPPH pilot: Austria, Hungary, Russia, Australia, Iceland, Singapore, Canada, Israel, South Korea, Denmark, Japan, Spain, Estonia, the Nordic Patent Institute, Sweden, Finland, Norway, the UK, Germany, Portugal and the US.

The 21 participating IP agencies are quite possibly the biggest recipients of patents in the world, with nearly 80,000 requests filed in GPPH countries at the end of December 2015.

PPHs generally aim to accelerate the processes of patent prosecution by allowing a pool of information to be shared between patent offices.

By benefitting from the work done by another patent office, applications can move faster, reducing workload and improving patent quality.

With that said, how has the worldwide PPH fared in its first two years?

Head out on the highway

Liz Coleman, head of the patents policy division at the UK IP Office (UKIPO) says that the GPPH has certainly simplified PPH arrangements between participating offices and that its systems continue to grow, creating a culture where companies and professionals have incorporated the PPH system as a standard part of their filing strategies.

“The GPPH provides applicants with simpler system to navigate compared to the preceding set of bilateral PPH agreements, with only a single set of guidelines and eligibility criteria applying to all offices within the network.

The GPPH Framework incorporates the ‘Mottainai’ principles, which remove restrictions traditionally found in some PPH agreements on the eligibility of applicants due to certain priority arrangements or the order of filing.”

Coleman says that not only have IP offices benefited from the increased efficiency, but also from a greatly reduced burden in terms of maintaining multiple bilateral arrangements.

“GPPH offices automatically develop PPH arrangements with new offices as the GPPH network expands which in turn potentially leads to further PPH requests and further efficiencies in the global patent system.”

“The number of participating offices has risen from 17 to 21 since the inception of the GPPH, with further offices expected to join in due course, which can be seen as an endorsement of the GPPH’s development and progress.”

This can be taken as a testimonial of success, but still, after two years, not all countries are looking to become involved with the GPPH.

Highway to nil

Nicky Garnett, head of Africa patents at Adams & Adams, sheds some light on the concerns and issues that certain African countries might have with global patent projects such as the GPPH.

“There is no such thing as an ‘African Patent’, she says, explaining that the continent doesn’t benefit from its own European Patent Convention model

“We do have two regional systems in Africa, namely the African Regional Intellectual Property Organization (ARIPO) and the African Intellectual Property Organization, better known as its French name the Organisation Africaine de la Propriété Intellectuelle (OAPI).”

“Africa has 18 states which can be designated in an ARIPO patent application and OAPI has 17 member states. Both systems cater for English as a working language.”

“In addition, unlike a European Patent, no validation process is necessary, so once a patent has been granted it has automatic effect in all designated states in the case of an ARIPO patent and all OAPI member states in the case of an OAPI patent.”

These systems allow for African patents to be relatively easy to acquire in multiple patent offices in the continent.

Despite a large patent programme in Africa, Garnett says that the majority of countries in Africa “do not conduct substantive examination of patent applications”, and those that do can have “serious capacity issues.”

Africa’s problems with large-scale patenting seem to be mainly in Africa’s largest economies, which aren’t part of either organisation and require separate filings in each jurisdiction, causing problems with capacity.

“In South Africa, where moves to introduce substantive examination are underway and training of examiners has recently begun, it is expected that it will take several years before the South African Patent Office is able to effectively examine applications in all technical fields.”

Citing Egypt as an example, Garnett says that its current PPH deal with Japan is the first step towards confidence in the GPPH in South Africa.

But there are many countries left in Africa that are concerned about their registration type systems.

Most are content with existing systems and, apart from those that have already introduced some form of examination, it seems there is little desire to change the status quo.

Nobody’s gonna slow me down

Mark Roberts partner at Davies Collison Cave, says: “In Australia, the GPPH system doesn’t have a direct impact, it was already possible to secure accelerated examination without the need for payment of a fee or providing detailed justification.”

“There are also some disadvantages of using the GPPH system in Australia, as the claims need to be amended to be substantially the same as those of the allowable claims in the other jurisdiction being relied upon.”

“It may be that if the GPPH system was not being used alternative claims would be used that are more suitable for Australian requirements,” Roberts adds.

“The patent offices would likely say that the system reduces workloads for patent offices, but in effect I would say that the GPPH system has little direct impact in this regard as patent offices already rely on work performed by other offices in ways, separate from the GPPH.”

According to the GPPH statistics published on the PPH portal site, Australia’s cumulative number of PPH requests was on the lesser end of GPPH members, with only 2,190 requests.

The UK also hit the lower end with only 347 requests filed, presumably due to other patent programmes in the EU, such as the European Patent Office, which doesn’t take part in GPPH.

Comparatively, the US has 36,032 cumulative requests filed in the GPPH.

With these drawbacks, GPPH may not be a truly global cooperation if it is more viable in some countries than others.

However, Roberts says: “It is at least useful that there are similar systems in place across the world, rather than each jurisdiction offering a different approach for securing accelerated examination.”

And patent offices worldwide are not required to end their bilateral cooperations under traditional PPHs, even if their partners do not take part in the GPPH pilot, providing a high degree of flexibility for both applicants and patent offices.

Looking for adventure

Expectations of the GPPH have largely matched up with the realities, but mostly in countries that were already part of bilateral patent prosecution agreements.

For countries outside of the exclusive borders of patent prosecution and cooperation, the GPPH doesn’t offer anything new, in both its availability and potential applications.

It is clear that we are still a way off from true global patent prosecution, but the GPPH and similar treaties are the first step to unifying and fusing innovation around the world. IPPro

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