Global Patent Prosecution Highway (GPPH): New Prosecution Options

The Global Patent Prosecution Highway (GPPH) is a new program that came into effect on January 6, 2014. It provides options for accelerated examination in participating states based on allowance or grant of corresponding applications in other such states. The Israeli Patent Office is one of the 17 participating offices that include also the USPTO and others, and, consequently, new accelerated procedures are now available to applicants of Israeli patent applications. Similarly, success in examination of an Israeli application may be used to accelerate prosecution in other participating states. 

The Patent Prosecution Highway (PPH) is a series of bilateral agreements between patent offices that enable acceleration of examination in one state based on favorable results of examination in other states. Israel has PPH agreements with the USA¹., Japan, Denmark, Canada and Finland (a future agreement with Korea is expected to come into effect soon).

GPPH is a new pilot prosecution highway program that came into effect on January 6, 2014. The Israeli Patent Office joined as a member along with 16 other patent offices, de facto extending the PPH program and the possibilities of both overseas and Israeli applicants to enjoy the benefit of an accelerated examination based on allowed or granted claims in one of the 17 jurisdictions. These include Australia, Canada, Denmark, Finland, Hungary, Iceland, Japan, Korea², Nordic Patent Institute³, Norway, Portugal, Russian Federation, Spain, Sweden, United Kingdom and the USA.

Initiation of the GPPH, and the participation of some of the most dominant patent offices in the world, may prove to be a milestone in global prosecution of patent applications and will hopefully diminish the number of office actions issued per a family of patent applications.

In order for an application to enjoy the benefits of the GPPH, it must include one or more claims that sufficiently correspond to claims that were determined to be patentable or allowable by another patent office that is a member of the GPPH. A request for proceeding under the GPPH must be submitted prior to the onset of examination. In Israel, the last opportunity to request to proceed under the GPPH is in response to the Notification Prior to Examination⁴.

¹ See our October, 2012 newsletter entitled Israeli and US Patent Offices Extend and Expand Mutual PPH Pilot Program: Now Applies also to PCT Applications Examined by Both Offices

² International Searching and International Preliminary Examining Authorities under the PCT

³ An intergovernmental organization established by the governments of Denmark, Iceland and Norway. Also an International Searching and International Preliminary Examining Authorities under the PCT

⁴ A notification that is issued by the Israeli Patent Office before the examination begins in response to which the applicant is required to submit information and material to the Israeli Patent Office, including, in particular, information on references cited in the prosecuting of corresponding applications and copies of some such references.