Patent Cooperation Truly: Moving Towards a True International Patent?

I have previously advised on this blog site that over-filing for foreign patent rights is one of the top five IP-related mistakes made by small and medium-sized businesses (SMEs).  This is because patents are jurisdictional in nature. You cannot enforce an issued U.S. patent in, for example, the UK. Conversely, you cannot enforce an issued UK patent in the United States. That is, you must generally apply for, and be granted, a patent on a jurisdiction–by–jurisdiction basis because there is still no such thing as an “international patent.”  Are we headed, however, down that path?  It would seem so!

About five years ago, patent offices around the world started a set of initiatives known as the “Patent Prosecution Highway” (PPH) for providing accelerated patent prosecution procedures by sharing information between offices.  As described by the U.S. Patent and Trademark Office (USPTO):

Under the [PPH], an applicant receiving a ruling from the Office of First Filing (OFF) that at least one claim in an application filed in the OFF is patentable may request that the Office of Second Filing (OSF) fast track the examination of corresponding claims in corresponding applications filed in the OSF. PPH will leverage fast-track examination procedures already available in the OSF to allow applicants in the OSF to obtain corresponding patents faster and more efficiently.

To date, the USPTO has a PPH arrangement with the following jurisdictions:  Australia (IPAU), Austrian Patent Office (APO), Canada (CIPO), Denmark (DKPTO), European Patent Office (EPO), Finland (NBPR), Germany (DPMA), Hungary (HPO), Japan (JPO), Korea (KIPO), Russia (ROSPATENT), Singapore (IPOS), Spain (SPTO), and the United Kingdom (UKIPO).  More USPTO PPH agreement announcements are expected.

In addition to the growing number of PPH announcements, I have noticed an expansion of this global patent cooperation trend over the past few months.   For example:

• The EU, as I previously reported, took steps toward an EU-wide patent when, on March 10, 2011, the European Council of Competitiveness Ministers authorized the launch of “Enhanced Co-operation” among EU Member States for the creation of a unitary patent.  Thus, the 25 supporting Member States decided to move forward with the objective of agreeing unanimously among them on a unitary patent that would be valid across all 25 participating Member States.  Italy and Spain are staying outside the process because they object to the unitary patent system operating solely in English, French and German.

• On June 20, 2011, the Nordic Patent Institute – a cooperative effort of the governments of Denmark, Iceland, and Norway – announced that it will start a one-year pilot project for the Patent Prosecution Highway based on Patent Cooperation Treaty work products.  The pilot projects means that an applicant, who has chosen Nordic Patent Institute to act as their searching authority and has received a favorable Written Opinion or International Preliminary Report on Patentability, may request that a corresponding national phase entry or a national application filed at the USPTO receive fast-track examination.

• On July 5, 2011, the Governments of Australia and New Zealand announced that they have agreed to a plan to deliver a single application process for both countries by early 2013, and a single patent examination by June 2014.  The single patent process is part of a suite of intellectual property initiatives proposed under the trans-Tasman Single Economic Market.

• On July 14, 2011, a group of nine South American countries – Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru, Suriname and Uruguay – announced a pilot project to assist in their efforts to improve services to local and international users of their respective IP systems.  The project is referred to as “PROSUR” (regional cooperation system on IP), and will initially focus on sharing patent examination results and other IP resources.  This is reportedly a first step towards the integration of IP offices in the region.

 Thus, I think we are moving towards a global system of true patent cooperation.  Stay tuned for SME patent foreign filing cost-savings!