How to use PPH to accelerate the examination of Chinese invention patent applications
Due to the need to undergo substantive examination, the long examination period for invention patent application has always been a problem for applicants who want to quickly obtain patent rights in China. Applicants can currently use the following methods in China to accelerate the examination process: Patent Prosecution Highway (PPH), Prioritized Examination and Rapid Pre-examination. For foreign applicants, PPH is the most commonly used method.
1. Overview of PPH
1.1 What is PPH?
PPH is a cooperation for sharing examination results between patent offices, which aims to help applicants obtain patent rights for overseas applications faster. Specifically, the PPH enables an application whose claims have been determined to be patentable in the Office of First Filing (OFF) to undergo an accelerated examination in the Office of Second Filing (OSF) with a simple procedure upon a request from an applicant on the basis of bilateral office agreements.
1.2 What is the role of PPH
Accelerating examination process: in China, after the PPH request is approved, the examination result (office action or grant notice) can usually be received within 1–2 months;
Increasing the authorization rate: since the Chinese examiner will refer to the final ruling from the first patent office, the authorization rate will be increased to a certain extent. Of course, it does not rule out the possibility that the application will eventually be rejected;
Saving cost: time cost is saved because the examination process is accelerated, and the response fee to office action is saved as the authorization rate may be increased.
1.3 What are the types of PPH
Normal PPH: an accelerated examination can be requested using the work products of a first patent office (Office of First Filing, OFF) for national application; the Office of First Filing (OFF) must be the authority that initially received the application.
PCT-PPH: an accelerated examination can be requested using the PCT international work products, i.e. a written opinion established by certain International Searching Authorities (WO/ISA), a written opinion established by certain International Preliminary Examining Authorities (WO/IPEA) or an international preliminary examination report (IPER) established by certain International Preliminary Examining Authorities.
PPH MOTTAINAI: an accelerated examination can be requested on the basis of an earlier office’s (Office of Earlier Examination, OEE) examination result. In this case, the OEE does not have to be the first authority to receive the application concerned.
1.4 What fundamental requirements need to be met for PPH
1) The OSF application is in particular relationship with the OFF application. (e.g. The OSF application is an application which validly claims priority under Paris Convention to the OFF application.)
2) OFF application has at least one claim that was determined by the OFF to be allowable.
3) All the claims in OSF application sufficiently correspond to the allowable/patentable claims in OFF applications.
4) The examination has not begun in the OSF. (This requirement doesn’t exist in some offices.)
2. How to file a PPH request in China
2.1 Requirements
1) The patent office that made the work result signed a PPH agreement with the China National Intellectual Property Administration (CNIPA);
* PPH participants with the CNIPA (Currently valid, 26 offices):
Korea, Japan, USA, EPO, Russia, Denmark, Finland, Austria, Poland, Portugal, UK, Iceland, Sweden, Hungry, Czech Republic, Norway, German, Eurasian Patent Organization, Canada, Chile, Brazil, Argentina, Singapore, Israel, Malaysia and Egypt.
2) The Chinese application must have the same earliest date whether this be the priority or filing date of a corresponding national/regional application;
3) The corresponding application has at least one claim indicated by the national/regional office to be allowable/patentable;
4) All claims in the Chinese application, as originally filed or as amended, must sufficiently correspond to one or more of those claims determined to be patentable/allowable in the corresponding application (that is the scope of claims of Chinese application is same or similar or smaller relative to the corresponding application);
5) The Chinese application must have been published;
6) The Chinese application must have entered into the substantive examination stage (that is the applicant must have received the Notice of Invention Patent Application Entering into Substantive Examination Stage issued from the CNIPA);
Note that as an exception, the applicant may file a PPH request simultaneously with the equest for Substantive Examination.
7) The CNIPA has not begun examination of the application at the time of request for the PPH (that is the applicant should have not received any office action issued from CNIPA);
8) The Chinese application must be electronic patent application.
2.2 Required Documents
1) PPH request form, including claims correspondence table;
2) Copies and translations of claims which are deemed patentable in the OFF;
3) Copies and translations of all office actions in the OFF;
4) Copies of references cited by the OFF’s examiner.
*In many cases, it is suffice to fill out necessary information in the request form. Actual submittal of documents 2)-4) is not required.
2.3 Fee
No official fee required.
3. The main difference of PPH request between IP5
Conclusion: PPH leverages fast-track examination procedures already in place among participating patent offices to allow applicants to reach final disposition of a patent application more quickly and efficiently than standard examination processing. If the corresponding conditions are met, the applicant can consider using PPH to accelerate the examination process.
