Accelerating patent examination in Australia: Options and strategic considerations

There are currently two distinct avenues for expediting examination in Australia, which broadly rely on:

• Successful examination of a corresponding family member (GPPH/IPA-EPO PPH), or
• At least one viable reason being provided to IP Australia for examination to be expedited.

Global Patent Prosecution Highway (GPPH) and IP Australia–European Patent Office Patent Prosecution Highway (IPA–EPO PPH)

The GPPH is an international cooperation program among participating IP offices that enables applicants to leverage a positive examination outcome from one office to fast-track examination in another. Australia is a participant in the GPPH, with agreements in place with over 20 other countries, including:

• United States (USPTO)
• Japan (JPO)
• South Korea (KIPO)
• Canada (CIPO)
• New Zealand (IPONZ)
• Singapore (IPOS)
• United Kingdom (UKIPO)
• And other countries

If a corresponding application in a GPPH country has received a report in which one or more claims are deemed allowable (including through the Patent Cooperation Treaty (PCT) where an appropriate patent office is the International Search Authority (ISA)), an applicant can file a GPPH request with IP Australia for claims that sufficiently correspond to the claim(s) deemed allowable.

The request must be filed at the same time as, or after, requesting examination and before issuance of the first examination report. The request must include:

• A copy of the allowable claims
• A copy of the office action or examination report indicating allowability
• A claim correspondence chart if the claims are not identical
• Translations if supporting documents are not in English

No government fee is required, and more than one approved corresponding application may be used (e.g. such that the claims of two or more corresponding US continuation cases may be consolidated into a single Australian application).

A corresponding application in a GPPH country will normally need to share a priority claim and/or be based on the same PCT application as the Australian application. Australian claims are considered to sufficiently correspond if they are of the same or narrower scope than the allowable claims in the GPPH country.

While the Australian claims must sufficiently correspond with the claims at the time of making the GPPH request:

• The language of the claims may be adapted to account for different claim constructions between jurisdictions (e.g. EPC2000 claims).
• After the first examination report is issued, alternative claim amendments may be filed, including to cover subject matter and/or claim types that were not permitted in the corresponding application(s) (e.g. method of treatment and/or Swiss-style claims). Filing a postponement of acceptance when requesting examination will ensure that a first examination report will always issue, so that such amendments can be made.

When approved, GPPH requests typically lead to earlier issuance of the first examination report. Although not guaranteed, the first examination report is often a positive report identifying allowable claims.

An independent agreement also exists between IP Australia and the European Patent Office (IPA–EPO PPH) to allow fast-track examination, which has very similar requirements and procedures to GPPH. Australian applications based on PCT applications where the European Patent Office is the ISA may also be accelerated on this basis.

Strategic use: Particularly effective where allowable claims are identified in another participating country or region, enabling acceleration of examination while drawing attention to positive patentability position elsewhere.

Expedited examination under IP Australia Guidelines

IP Australia also offers an expedited examination pathway that is independent of the status of any corresponding patent family member, again without incurring any government fees.

To access this route, the applicant must indicate why the application should be expedited. A non-exhaustive list of possible reasons includes:

• Prospective commercialisation or licensing opportunities
• Potential infringement or enforcement concerns
• The invention relates to green technology or has environmental benefits
• The applicant is a small or medium-sized enterprise (SME)

The applicant can submit a request for expedition at the same time as, or after, requesting examination. If accepted, the application is typically assigned to an examiner within a few weeks, and an examination report can be expected within 8 weeks of the request.

If reasons for requested expedited examination are sensitive, the applicant can consider making the request via a phone call to an examiner.

Strategic use: Particularly effective where there is a need to expedite examination, but no corresponding patent family members have progressed to either acceptance or grant. This route may also result in faster issuance of a first examination report than GPPH and allow subject matter prohibited or not examined overseas, to be pursued at an earlier date.

Key differences between expedited examination and PPH requests

Both pathways can be effective tools to accelerate prosecution, depending on the applicant’s situation. In some cases, a combined strategy may be possible—for example, requesting expedited examination under IP Australia Guidelines, while separately drawing attention to positive foreign examination outcomes to streamline examination.

Tailoring your approach to requesting examination

Patent applicants with time-sensitive commercial or strategic goals should consider whether expedited examination or the GPPH is appropriate for their Australian patent application. Each route offers benefits and can significantly reduce the time to grant.

If you would like tailored advice on the best strategy for your patent application, our experienced patent attorneys are ready to help you navigate the most effective path to grant—whether through PPH, expedited examination, or a tailored hybrid approach.