Easing the Patent Process - The Vancouver Group

Author:Mr Jonathan Lucas
Profession:James & Wells Intellectual Property

Patent offices around the world are increasingly developing ways to simplify the patent process for those who file corresponding patent applications in a number of countries. Principally, the initiatives aim to encourage consistency of examination between the patent offices of different countries and to provide greater certainty for patent owners and would-be infringers. They also aspire to reduce costs by eliminating duplication of effort between offices.

Recently, an agreement has been reached between the patent offices of Australia, Canada and the UK (the so-called "Vancouver Group") to co-operate with each other to make patent examination in those countries easier, faster and cheaper. We explain the way it will work below. This agreement goes beyond existing schemes like the Patent Prosecution Highway (PPH), also outlined below.

The Vancouver Group initiative is welcome news to those who file patent applications in Australia, Canada and the UK, which includes many New Zealand companies. For it to be of most benefit to New Zealand companies, the Intellectual Property Office of New Zealand (IPONZ) will need to sign up to the project along with its counterpart offices. We understand that this is hoped for in the future but, as with so many other issues in domestic patent law at the moment, we are likely to need to wait until the new Patents Act comes into force so that New Zealand's patent examination criteria are aligned with those of the Vancouver Group countries.

Summary of the Vancouver Group Agreement

The agreement of the Vancouver Group is based on several "mutual exploitation principles":

Where possible the patent office of a Vancouver Group country will rely on a search or examination performed by another office. An office can perform further searching and examination if it deems it necessary; The patent offices will take the initiative and rely on the earlier work of other offices without applicants having to request it; Applicants will be kept informed of where work of another office is relied upon. If further search or examination is required, both the applicant and the earlier office will be given feedback as to the reasons this was necessary; It does not matter where the patent application was first filed; and If one Vancouver Group patent office indicates a claim is allowable (or grants a patent), the applicant can apply to the other offices for expedited examination of the corresponding applications. Contrast with the...

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