Fast Lane to Patent Approval in China
Patent Prosecution Highway
Patent Prosecution Highway (PPH) is an international cooperation initiative first proposed by the United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) in 2006, with the ultimate goal of speeding up the examination process of patent applications filed worldwide under limited examination resources.
Taking advantages of the fact that patent offices around the globe implement essentially the same standards for determining patentability, the PPH agreement allows participating patent offices to share work products of patent search and examination, thus eliminating repeated examination of identical inventions and accelerating the prosecution of patent applications. Under PPH, patent applicants are provided more efficient and cost-effectively options to obtain patent approvals fast and assert their patent rights early and consistently in multiple countries or regions.
As of July 2015, a total of 36 patent offices, including the State Intellectual Property Office of P. R. China (SIPO), have enrolled in at least one of the three forms of PPH.
[FIG. 1]
Modes of PPH
Bilateral (Paris) PPH
The most conventional mode of PPH is the one established between two patent offices. As shown in the following figure, when an applicant receives a final ruling from an Office of First Filing (OFF) that at least one claim have been allowed, the applicant is eligible to request an accelerated examination of a corresponding patent application that is pending in an Office of Second Filing (OSF), if the claims in the corresponding application are demonstrated to sufficiently correspond to the allowed claim(s) in the OFF application.
[FIG. 2]
PCT-PPH
Similar to bilateral PPH, an applicant of a PCT application having received positive opinions towards the claims in an international search report issued by an international authority (ISA or IPEA), acting as an OFF, may file a PPH request for accelerated examination of a corresponding national stage application in the corresponding national/regional patent office, acting as an OSF.
[FIG. 3]
A few points for applicants to keep in mind; bilateral PPH and PCT-PPH have strict rules on the definition of OFF. The filing in an OFF must have been the very first filing of an patent application; that is, filing date at an OSF may not be earlier than the OFF filing date. In addition, OSF shall adopt search and examination results provided only by the OFF, but not by any other third filing offices.
Furthermore, search and examination results provided by the OFF merely serve as a reference for examination at the OSF. In other words, allowance of a claim by an OFF does not guarantee allowance at an OSF.
PPH MOTTAINAI
PPH MOTTAINAI is a multi-lateral PPH framework with further and deeper cooperation among the participating patent offices. As illustrated in the following figure, as the speed of examination often varies by offices, PPH MOTTAINAI focuses on the date of examination completion, instead of the date of application filing, therefore offering more flexibility on the timing of filing in the participating offices. The PPH MOTTAINAI agreement is a more favorable option for patent applicants, especially for those desiring to protect their inventions globally.
[FIG. 4]
PPH MOTTAINAI remains eligible even when the first filing of an application occurs in a non-participating office. Under such circumstance, the applicant may have the freedom to choose PPH MOTTAINAI or the conventional route if the first filing office has an active bilateral PPH agreement with the office to which the applicant wishes to file a request for accelerated examination.
[FIG. 5]
Filing PPH Requests at SIPO (China)
Starting from 2011, the State Intellectual Property Office of China (SIPO) has established a number of bilateral PPH pilot programs with patent offices around the globe, including the ones in Japan, United States, Germany, Korea, Russia, Finland, Denmark, Mexico, Austria, Poland, Canada, Singapore, Spain, Portugal, United Kingdom, Israel, Iceland, and Sweden.
More recently, SIPO has come into a multi-lateral agreement in January 2014 with USPTO, JPO, European Patent Office (EPO), and Korean Intellectual Property Office (KIPO), establishing a three-year-long IP5 PPH pilot program. IP5 PPH is more flexible and simpler than conventional PPHs.
With the variety of PPH programs available at SIPO, applicants of Chinese patent applications are advised to counsel or seek assistance from a professional IP firm and choose the route and timing to file/request that are most advantageous to your patent applications and business needs.
However, as PPHs are relatively new practices to SIPO, the Office tends to review PPH requests with less flexibility. To ensure successful approval of PPH requests at SIPO, applicants shall be aware of the followings:
SIPO requires that the application being requested for accelerated examination shall have at least one qualifying corresponding application having at least one patentable/allowable claim as determined by the corresponding filing/examination office. In the case where bilateral PHH and IP5 PPH are both available options, applicant shall always take the more preferable IP5 PPH route.
Under IP5 PPH, submission of the copies of the corresponding claims and past office actions is not required if the documents are accessible via the file retrieval system (for example, Public PAIR at the USPTO) of the corresponding office.
Claims in the application to be requested for accelerated examination must sufficiently correspond to the claims in the OFF/PCT application. SIPO requires that the Chinese application shall have identical or narrower claims than the corresponding application, and advised that the claims presented in the two applications shall be literally consistent to the highest possible extent, so for PPH reviewers to unquestionably identify the sufficiency of correspondence of the two applications and therefore approve the PPH request in a timely fashion.
Consequently, applicants should be mindful of the permitted time frame to preliminarily amend their claims (at time of filing a request for substantive examination, or within 3 months after mailing of the notice of entry of substantive examination) to ensure that their claims are properly sufficiently corresponding.
SIPO requires that the application to be requested for accelerated examination must have been published, and that substantive examination of the application has been entered, but no examination opinion has been issued. Fortunately, applicants are allowed to file a request for substantive examination together with a PPH request.
SIPO advised applicants to file a PPH request preferably after a notice of allowance of the corresponding application has been issued. In this way, the number of required documents would be reduced, decreasing the possibility of human error on both ends and thus ensuring the successful approval of the PPH request.
SIPO accepts English as a translation language in reviewing PPH requests. As a result, submission of the Chinese translation of documents for an English corresponding application is not required.
SIPO required no additional fee for filing a PPH request.
Making the Best Use of PPH programs in China
PPH has provided a convenient and efficient solution to global patent strategizing, especially for applicants having technologies with high turnover rates and high demands for asserting IP rights internationally. As the PPH pilot programs in China has implemented smoothly and continued to show expansion and extension of cooperation, IP owners desiring to obtain patent protection in China fast and cost-effectively are encouraged to utilize the variety of PPH programs available at SIPO. Counsel a professional IP firm for more information on what PPH program best suits your business needs in China.
Reference:
http://www.jpo.go.jp/ppph-portal/index.htm
http://www.sipo.gov.cn/ztzl/ywzt/pph/
http://www.patsnap.com/article/id-82
Author:
Chieh-Mei (Jamie) Wang, Ph.D.; U.S. Patent Agent at PIIP