China: Several Crucial Points In Time In The PPH Request Filing Process

Last Updated: 3 December 2019
Article by Wang Hong Yan

In the process of filing a PPH request, the impact of timing to an attorney is far less powerful than that of the claim correspondence. However, taking advantage of several crucial points in time can be helpful to clear obstacles in the PPH request filing process and can improve the success rate of the PPH request.

1. The timing for filing a PPH request

Typically, a PPH request may be filed when filing a substantive examination request for the Chinese application under a precondition that the Chinese application has been published, or when a notification of entering into the substantive examination stage has been received from SIPO but no office action has been received from the substantive examination department.

The PPH procedure is aimed to accelerate the substantive examination procedure of the Chinese application, thus the examination of a PPH request is usually carried out after the Chinese application has entered the substantive examination stage. If the PPH request is filed when filing the substantive examination request for the Chinese application, there will be a waiting period for the PPH request from filing the substantive examination request to entering the substantive examination stage, and in the above waiting period, the examination result of the corresponding application may change. If the examination result of the corresponding application changes during the above waiting period, it will directly lead to the failure of the PPH request.

For a PPH request filed when a notification of entering into the substantive examination stage has been received from SIPO but no office action has been received from the substantive examination department, the PPH examination decision can generally be received within about 20 days after filing the PPH request. Even if the first PPH request fails, it will be easier for the attorney to recall the various situations of the Chinese application when they recheck the documents and submit the PPH request again.

Therefore, it would be relatively advisable to file a PPH request when the notification of entering into the substantive examination stage has been received from SIPO but no office action is received from the substantive examination department, that is, it is more likely that the PPH request will be successful.

2. The timing for voluntary amendments

The success rate of the PPH request can be greatly improved by amending the claims of the Chinese application to be identical with those of the corresponding application through voluntary amendments. Therefore, when filing the PPH request, it is very important to have a good grasp of the timing for making voluntary amendments to the Chinese application.

In accordance with the provisions of Article 51, paragraph 1, of the Rules for the Implementation of the Patent Law, the applicant may make voluntary amendments to the Chinese application when filing a request for substantive examination of the Chinese application or within three months after receiving the notification of entering into the substantive examination stage.

However, can the claims of the Chinese application which are voluntarily amended at the above points in time necessarily be used as the examination basis for the PPH request?

The answer is, of course, no.

If amendments to the claims of the Chinese application are made at the above-mentioned points in time of voluntary amendment but after filing of the PPH request, the amended claims cannot be used as the examination basis for the PPH request. The claims of the Chinese application which can be used as the examination basis of the PPH request shall be the latest claims filed before the filing of the PPH request, or when filing the PPH request and in conformity with the relevant provisions.

Therefore, in the PPH request, voluntary amendments to the claims of the Chinese application should be made at the latest when the PPH request is filed while also meeting the provisions of Article 51, paragraph 1, of the Rules for the Implementation of the Patent Law. Voluntary amendments to the claims of the Chinese application made at other points in time may directly lead to the failure of the PPH request.

3. The timing for re-filing the PPH request

In some cases, an attorney may find that there is an error in the request form just after filing a PPH request, and they modify the error and re-file the PPH request form again in time. If so, congratulations! You have just used up the two filing opportunities for filing the PPH request, which means there is no chance to file a PPH request for the same Chinese application again if the previous PPH request is rejected.

Typically, the Patent Office counts how many PPH requests for a Chinese application have been filed based on the number of PPH request forms received in the system.

Therefore, after filing a PPH request, once you find that there is an error in the PPH request form, do not rush to make modifications. You should wait until the rejection decision is received, since in addition to the error found by the attorney, there may be other problems in the filed PPH request that the attorney did not find. In this scenario, there will no opportunity to re-file the PPH request at all.

In addition, for the re-filed PPH request, it is also necessary to file according to the above-mentioned points in time.

4. The timing for responding to a PPH request correction

The due date for responding to a PPH request correction is 30 days from the issuing date of the correction, and cannot be recovered or extended.

Incidentally, when responding to the correction, if there is a problem in the PPH request form, you shall file the corrected PPH request form in the form of other document, and shall not directly file a new PPH request form, so as not to directly lead to the loss of the next opportunity to file the PPH.

In conclusion, in the process of filing the PPH request, whether filing the PPH request for the first or second time, attention should be paid not only to the timing of filing the PPH request, but also to the timing of making voluntary amendments. Fully considering and utilizing the above-mentioned points in time can effectively improve the success rate of the PPH request.

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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