Wade Deng | Nov 28, 2021

Patent Prosecution Highway (PPH) is a program to fast-track patent examination. It greatly speeds up the examination process for patent applications filed in participating intellectual property offices. When claims in a patent application (Corresponding Application) have been deemed patentable/allowable by a participating office (Office of Earlier Examination/OEE), the applicant may request accelerated examination prosecution of corresponding claims in another participating office (Office of Later Examination/OLE). PPH request includes two forms: (1) Conventional PPH, based on the national or regional examination results of a foreign application; (2) PCT-PPH, which uses the international examination results of a PCT application.

The general practice of filing a PPH request with the CNIPA is summarized below.

I. Timing

A PPH request can only be filed following the publication of the patent application and prior to the issuance of the First Office Action. After the patent application is published, the applicant may submit a PPH request alongside the request for substantive examination. Alternatively, the applicant may submit a PPH request within three months after the patent application enters the substantive examination stage, in case there are voluntary amendments to be made at that time.

At most, there are only two opportunities to initiate the PPH procedure for the same patent application. If the first PPH request is not accepted, the applicant may file a second request after correcting the defects. However, if the second request is rejected as well, there will be no opportunity for any additional requests.

II. Requirements

1. Proper Examination Results

Generally, a PPH program agreement between participating offices has a term of effectiveness. For example, the IP5 PPH program is only effective between January 6, 2020 and January 5, 2023. When planning to file a PPH request in China, the applicant should first check if there is an effective agreement between the OEE and the CNIPA.

In addition, the OEE must be a foreign office. PPH requests filed with the CNIPA cannot be based on examination results from the CNIPA or the Taiwan Intellectual Property Office.

2. Positive Examination Results

For conventional PPH, the Corresponding Application must have one or more claims deemed patentable/allowable. For example, if the Corresponding Application was filed with the USPTO, the application has to be allowed or certain claims are listed as "allowable claims are ____" in the Notice of Allowance and Fee(s) Due.

For PCT-PPH, the latest Written Opinion of the ISA or the Written Opinion of the IPEA has to indicate that at least one claim is patentable/allowable.

If any claim receives a comment (such as the one shown below) in column VIII of the Written Opinion, the claim, and its dependent claims will usually need to be deleted prior to filing a PPH request with the CNIPA.

3. Correspondence of the Claims

All claims of the Chinese application must sufficiently correspond to the patentable/allowable claims of the Corresponding Application. More specifically, the Chinese claims should have either identical or smaller scopes of protection. If the claims of the Chinese application are inconsistent with the claims of the Corresponding Application, voluntary amendments to the claims will be required at the time of submitting the request for substantive examination or within three months after the Chinese application enters the examination stage.

If any claims are inconsistent and the deadline for voluntary amendments passed, it will be necessary to judge whether the protection scope of the Chinese application is smaller than that of the Corresponding Application. If the protection scope is determined to be smaller, a description indicating that “The scope of protection of the claims in this Chinese application is smaller than that of the claims in the Corresponding Application" would be required when submitting the PPH request.

III. Voluntary Amendments after Submitting PPH Request

After submitting a PPH request, an applicant may still make voluntary amendments within three months after the application enters the substantive examination stage. If the amendment is allowed, the previously filed PPH request will be considered invalid, regardless of whether or not it had been accepted. Consequently, the Chinese application will be processed under normal examination procedures. Therefore, if an applicant needs to modify any claims after submitting a PPH request, the applicant is suggested to modify them when replying to the First Office Action. Generally, the CNIPA examiner will accept some amendments to the claims made in response to the First Office Action.

Ⅳ. Effectiveness

Once a PPH request is accepted, CNIPA will issue a First Office Action in 1 or 2 months. According to the published data by CNIPA in July 2021, the current average examination time frame for invention patent applications is 19.4 months. If responses to the OAs are filed in good time, the examination time frame can be reduced to about 12 months under the PPH procedure.

If you have any additional queries regarding the fast-track examination in China, please feel free to let us know.