NZ joins Global Patent Prosecution Highway

New Zealand joined the Global Patent Prosecution Highway (GPPH) pilot programme on 6 July 2017. The GPPH is an agreement between patent offices around the world that provides a means to expedite examination on the basis of one or more allowed claims of a corresponding application allowed by another participating patent office.  The patent offices participating in the GPPH pilot programme include some of New Zealand’s largest export partners including Australia, Canada, Japan, South Korea and the United States.  At present the European Patent Office (EPO) and China (SIPO) are not part of the GPPH pilot programme.  Both are members of the IP5 Patent Prosecution Highway (EPO, JPO, KIPO, SIPO and USPTO) so they may join the GPPH at a letter stage.

Expedited examination may lead to the earlier grant of a patent, this is particularly advantageous in some of the participating counties that have traditionally been slow (5 – 10 years) to examine patent applications.  While GPPH does not guarantee grant of a patent in a participating office, GPPH speeds up examination for the patent application and an allowance or grant in one of the offices gives an earlier indication of the scope of protection that will likely be allowed in other participating countries.  Such information is valuable when making decisions with respect to overall commercialisation strategy.  If filing a GPPH request in New Zealand, IPONZ is usually respectful of other offices and is likely to apply findings of other offices unless there is good basis to find otherwise.

Examination in the New Zealand Patent Office is usually reasonably fast compared to other countries.  Overseas and New Zealand based applicants, can use the accepted claims of their New Zealand patent application and the GPPH to expedite examination of corresponding applications in other participating countries.  Alternatively, overseas applicants can use accepted/allowed/granted claims of a corresponding application from a GPPH member country to expedite examination of their New Zealand patent application.

Should I use GPPH?

The decision to use or not to use the GPPH program depends on your IP and commercial strategy and your current patent portfolio. The use of the GPPH provides another tool that can be integrated into your overall IP strategy.

The requirements of New Zealand and Australia are similar and so the GPPH can be used cost effectively for both countries through one agent, as both countries require similar concordance tables and an application prepared for New Zealand could be applied in Australia with minimal adjustment allowing the same work product to be used in both countries.