China: How To File PPH Request In China

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.

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