PPH (Patent Prosecution Highway) is an agreement reached among patent administrative authorities of different countries or regions to accelerate patent prosecution procedures. In particular, when one or more claims are allowed in one of the countries and regions that have entered into PPH agreement, an applicant could, on the basis of the allowed claims, ask other such countries or regions to accelerate the patent examination procedures. Through PPH, patent examination term will be greatly shortened, the number of OAs significantly cut, and the protection scopes of claims will be close among different countries. This newsletter summarizes the following commonly seen Qs and As.
China has signed PPH bilateral agreements with 19 countries (Japan, South Korea, Singapore, Israel, Germany, Russia, Denmark, Finland, Austria, Poland, Spain, Portugal, UK, Iceland, Sweden, Hungary, US, Canada and Mexico) since enforcing the first PPH agreement with Japan in November 1, 2011. On top of that, China also reached IP5-PPH multi-lateral agreements with patent offices of US, Japan, South Korea and EU. If a patent application meets any of the above-mentioned agreements and has been approved of filing through PPH, its examination process will be accelerated.
PPH could bring the following three benefits to applicants.
1. Cost saving
Filing through PPH will not cost any official fees and will only
incur little sum of service fees. It also cuts down prosecution
costs as the number of OAs will be reduced.
2. Time saving
The examination term for invention patents was 21.8-21.9 months
from 2014 to 2015. While according to our statistics, the average
time needed from filing PPH request to the case closing of a patent
application was 6.8 months, significantly shortened in comparison
with the former.
3. Higher granting rates
Take US for example, according to the statistics provided by PPH
Global Gateway, the average granting rate o is 86% for regular
patent applications through PPH, 88% for PCT-PPH, whereas the
average granting rate for all patent applications is 53%.
By nature, the requirements of PPH agreement could be divided into entity requirements and formal requirements as below.
1. Entity requirements
a. PPH agreement with SIPO
Patent office that made the preliminary examination conclusion
shall have PPH agreement with SIPO, which is to say that an
applicant could only file a PPH request on the basis of the above
bi-lateral or multi-lateral agreement.
b. Proper timing in filing a PPH request
An applicant shall file a PPH request after receiving publication
notice for invention patent and notice of an invention patent
application entering into substantive examination from SIPO, but
before receiving any OA from Substantive Examination Divisions of
SIPO; albeit one exception——if substantive examination
request for the application is still to be filed, an applicant
could file for PPH request when filing substantive examination
request at/after receiving publication notice for invention patent
from SIPO. Be reminded that the "OA" mentioned above
shall be interpreted in a broad sense, including OAs, divisional
application notices and such from Substantive Examination
Divisions.
c. Correspondence of patent application
According to the roles that prior examination authorities play, PPH
could be classified into two types. If earlier examination
authorities make conclusions on behalf of countries or regions, PPH
based on such conclusions are dubbed as regular PPH, whereas when
earlier examination authorities reach conclusions as international
search organization or international preliminary authority on PCT
international patent, PPH based on such conclusions are called
PCT-PPH. In general, patent correspondence through PPH could be
described as: 1) a patent application, based on which PPH request
is filed, shall belong to the same patent family with the
application filed to SIPO; 2) for bilateral regular PPH, both
applications are not allowed to jointly claim priority rights in a
third country outside the agreement, and PPH request could only be
filed to SIPO based on the examination result of the prior
application. For filing through IP5-PPH, it's only necessary to
meet the first condition (also known as PPH-MOTTAINAI).
The correspondence of applications takes many forms which are detailed in PPH agreements and will not be enumerated here.
d. At least one claim must be allowed
The forms of OAs are different among countries, and thus the statement as to whether a claim is allowed is also varies. In general terms, a claim is regarded as being allowed when the OA of earlier examination states "The claim/claims that is/are allowed/patentable is/are ____". But when a claim is not clearly noted as "patentable" or "have reasons to be rejected", applicant shall provide explanations as to why the claim shall be allowed when filing PPH request to SIPO.
e. Correspondence of claims
Correspondence of claims refers to the scope of the claims seeking
accelerated examination in SIPO shall be the same with or narrower
than that is allowed by other offices of PPH agreement.
2. Formal requirements
SIPO has set many formal requirements for PPH requests in China. Many of such rejected requests are chiefly caused by failing to meet the formal requirements. Applicants thus should be highly aware of such requirements which are briefed below due to limited length.
a. Complete set of PPH request documents
When filing PPH request before SIPO, Request Form for Participating
in the Patent Prosecution Highway Program (PPH request form) and
necessary attachment shall be submitted. Necessary attachment
includes the examination outcome and the translation of OEE (Office
of earlier examination), all claims OEE deems as allowable and
their copy and translation, as well as copies of documents OEE has
referred to during its examination process.
If such documents and their translations could be obtained through OEE's DAS or WIPO's PATENTSCOPE, applicants do not need to provide them.
When reference documents are patents, there is no need to provide their copies; and when reference documents are not patents but, at the same time, do not constitute reasons for rejection, there is also no need to provide their copies.
The translations of the examination outcome and the allowable claims could be Chinese or English, provided they are done in a word-to-word correspondence with the original text. The reference documents do not need to be translated.
b. Full description of the corresponding application
In PPH request form, correspondence relationship of the application
shall be described in full detail, including the priority
information of relative applications, and of the original
application which a divisional application derives from. Statements
such as "this application is a divisional application derived
from the Chinese application CN**** that claims priority from its
corresponding OEE application in accordance with PCT
regulations", "This application and its corresponding OEE
application both claim the priority of the application **** in
accordance with PCT regulations" are recommended.
c. Full explanation of the correspondence of claims
SIPO deems that claims are corresponding with each other only in
the following three circumstances.
1) exactly the same
This means that claims of an application in SIPO are translated in
a word-to-word fashion, with the sequence numbers of claims and
their reference relationship unchanged. In other word, apart from
the difference in languages, the two sets of claims are identical
in both form and content. The column of correspondence in PPH
request form shall be filled in as "exactly the same",
rather than "full correspondence".
2) reference relationships changed
When claims are renumbered to avoid multiple reference, or claims
are reduced to delete technical solutions, the sequence number or
reference relationship of the two sets of claims will be changed
accordingly. In such case, "reference relationship
changed" shall be filled in and detailed description shall be
given under.
3) technical features added
If, comparing with claims of OEE application, claims of SIPO
application adds technical features clearly recorded in the Chinese
original description/claims, their source and full content of the
source shall be indicated. Statements such as "On the basis of
the claim xx of the OEE application, claim xx adds technical
features recorded in Line x, Page x of Chinese
description/claims" is recommended.
In such cases, even if the claims of OEE application have errors, they cannot be corrected in the translation.
d. OEE examination outcome complete and names correct
For regular PPH, all examination outcomes of national stage of all
earlier examination offices shall be filled in; whereas for
PCT-PPH, only the latest international examination outcomes are
necessary. There are vast differences in the names of national
examination outcomes. SIPO provides a list of such commonly used
names and Chinese translations in the Table of notifications of
other offices that should be attached when submitting PPH request
before SIPO. The latest international examination outcomes for PCT
application are: Written opinion of International Search Authority
(WO/ISA), Written Opinion of International Preliminary Examination
Authority (WO/IPEA) and International Preliminary Examination
Report (IPER).
For notifications without the corresponding Chinese names given by SIPO, applicant could translate them into Chinese on its own and provide the original names in parenthesis.
e. Fill in the reference documents referred by OEE examination
outcome in full
Reference documents shall be complete without omission. For patent
documents, at least the country code and document number shall be
provided. For other documents, their names shall be provided in
full according to the notification and shall be listed with serial
numbers.
For PCT-PPH, family patents of the reference documents in the international examination outcome shall also be provided.
Apart from the above frequently seen problems, applicants should also be aware that PPH requests shall be filed in E-form only without incurring any official fees. There're only two openings when an applicant could file PPH requests before SIPO, with slim chances of further rectification (which are when the examiner can't understand the translation of claims or can't find any reference strong enough to reject the application). That's why uncertainty always surrounds the question of whether a PPH request could successfully be accepted.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.