Requirements and Procedures for the IP Australia-EPO PPH
programBackground
The IP Australia-EPO Patent Prosecution Highway (PPH) is a program
between IP Australia and the European Patent Office (EPO). This program
leverages fast-track patent examination procedures already available at IP
Australia and the EPO to allow applicants to obtain corresponding patents
faster and more efficiently.
Under the IP Australia-EPO PPH you are entitled to request expedited
examination for your Australian (AU) application in instances where anassociated application has been examined by the EPO and where at least
one claim has been determined to be patentable/allowable.
The IP Australia-EPO PPH program covers both Patent Cooperation Treaty(PCT) and Paris Route applications.
For the purpose of this notice:- the Office of Earlier Examination (OEE) refers to the EPO, also in
its capacity as International Search Authority (ISA) and/orInternational Preliminary Examination Authority (IPEA), the work
product of which is used as a basis for the IP Australia-EPO PPH
request;-the Office of Later Examination (OLE) refers to IP Australia as theoffice before which participation in the IP Australia-EPO PPH
program is being requested.

Requirements
In order to be eligible to participate in the IP Australia-EPO PPH program at IP
Australia, your application must meet the following requirements:
Requirement 1:
The AU application for which participation in the IP Australia-EPO PPH
program is requested must have the same earliest date with thecorresponding application, whether this be the priority or filing date of acorresponding national application filed with the EPO or a corresponding
PCT application for which the EPO has been the ISA and/or IPEA1).
The AU application is associated with the EP application in one of thefollowing ways:
I. The AU application claims priority from the EP application; orII. The AU and EP applications are both based on the same PCTThe IP Australia-EPO PPH program is not a mechanism for requesting expedited examination of anAU application where IP Australia was the ISA or IPEA and the PCT application is an Australian PCTapplication. You may instead consider requesting conventional expedited examination.
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application; orIII. The AU application and EP application claim priority from a common
priority document. The priority document can be filed in any jurisdiction;
orIV. The AU application is the basis of priority claim for the EP application; or
V. The AU application is a divisional of an application referred to in i, ii, iii oriv above.
The AU application is associated with a PCT application in one of thefollowing ways:
I. The AU application is the PCT application and it has entered nationalphase; or
II. The AU application claims priority from the PCT application; orIII. The AU application is a priority document for the PCT application; or
IV. The AU application is a divisional of an application referred to in i, ii, or iii
above.
Requirement 2:The corresponding application(s) must have at least one claim indicatedby the EPO in its capacity as a national office or ISA and/or IPEA to bepatentable/allowable. The claim(s) determined as novel, inventive andindustrially applicable by the ISA and/or IPEA has/have the meaning ofpatentable/allowable for the purposes of this notice.
Requirement 3:
All claims in the AU application for which a request for participation in theIP Australia-EPO PPH program is made must sufficiently correspond tothe patentable/allowable claims in the corresponding EP application(s).
Claims are considered to sufficiently correspond where, accounting fordifferences due to claim format requirements, the claims are of the sameor a similar scope or the claims in the application are narrower in scopethan the claims in the corresponding EP application(s). In this regard, aclaim that is narrower in scope occurs when an EP claim is amended tobe further limited by an additional feature that is supported in thespecification (description and/or claims). A claim which introduces anew/different category of claims to those claims indicated asallowable/patentable is generally not considered to sufficientlycorrespond. However where Australian law allows variation in categoryof claims applicants may consider adapting their claims, for example toinclude product by process claims.

Requirement 4:
A request for examination must either have been filed earlier or filed at
the time of requesting acceleration under the IP Australia-EPO PPH .
Substantive examination of the AU application for which participation in
the IP Australia-EPO PPH program is requested must not have alreadybegun.
Documents Required for Participation in the IP Australia-EPO PPH
program
For participation in the IP Australia-EPO PPH program at IP Australia theapplicant has to:(1)

file a request for participation in the IP Australia-EPO PPH
program;(2)

file an indication of claims correspondence which is included in theRequest Form;(3)submit a copy ofeither all the office actions for the OEE corresponding
application(s) containing the patentable/allowable claims that are
the basis for the IP Australia-EPO PPH request and a translation
thereof in English,orthe latest work product in the international phase of a PCT
application, the WO-ISA or, where a demand under PCT Chapter II
has been filed, the WO-IPEA or the IPER and a translation thereofin English.

(4)

submit a copy of the patentable/allowable claim(s) from the OEEapplication(s) and a translation thereof in English.

In those instances where the request for participation in the IP Australia-EPO
PPH program does not meet all the requirements set forth above, theapplicant may be notified of the deficiencies in the request. The applicant willbe allowed to correct deficiencies identified and if not corrected, theapplication may be taken out of the IP Australia-EPO PPH program.
Supporting Documents
If any of the documents identified in points (3) and (4) above(a)have already been filed in the AU application prior to the request
for participation in the IP Australia-EPO PPH program, it will not
be necessary for the applicant to resubmit these documents with
the IP Australia-EPO PPH request.
The applicant may simply refer to these documents and indicate in
the request for participation in the IP Australia-EPO PPH program
when these documents were previously filed in the AU application.

(b)are available via Espacenet or PatentScope, the applicant does notneed to submit a copy thereof, but has to provide a list of the
documents to be retrieved. Machine translations will be admissible
for the documents identified in points (3) and (4).

IP Australia may request applicants to submit a verified translation of the
documents identified in points (3) and (4) above if they are insufficient. If theOEE application(s) is (are) unpublished, the applicant must submit thedocuments identified in points (3) and (4) above upon filing the IP AustraliaEPO PPH request.
Examination of the AU application under the IP Australia-EPO PPH
Once the request for participation in the IP Australia-EPO PPH has been
approved, IP Australia will treat this request for accelerated examination
under the IP Australia-EPO PPH as a request for expedited examination
under Australian law.
Examination of AU applications that satisfy the requirements for accelerated
examination under the IP Australia-EPO PPH will take account of the work
performed previously by the OEE.
The AU application will be examined in accordance with the Patents Act 1990,
Patents Regulations 1991 and IP Australia’s Manual of Practice andProcedures.
How to File a Request for Participation
The documents required for participation in the IP Australia-EPO PPH can be
filed with IP Australia by either mail or via eServices.
All subsequent correspondence with IP Australia relating directly to the IP
Australia-EPO PPH request must clearly identify the application as an IP
Australia-EPO PPH program application to ensure that thecorrespondence is correctly processed.
The request for expedited examination under the IP Australia-EPO PPH
program must also be accompanied by, or preceded by, a request forstandard examination.
As with a conventional request for expedited examination, additional fees
beyond standard examination are not required when requesting expedited
examination under the IP Australia-EPO PPH.
Enquiries
Enquiries in relation to the IP Australia-EPO Patent Prosecution Highway fromwithin Australia should be directed to IP Australia’s Customer Service Centreon 1300 65 10 10.
Enquiries from outside Australia can be directed to +61 2 6283 2999.