Requirements for Requesting PPH in China using Positive Opinions Made by 27 participating Offices (updated December 17, 2021)
As more and more applicants are interested in how to expedite the prosecution of their invention patent applications in China for seeking earlier protection for their inventions, Patent Prosecution Highway programs in China have been absorbing increasing attention. Here we would like to provide the following basic information about PPH programs in China for your reference.
The China National Intellectual Property Administration (CNIPA) first launched Patent Prosecution Highway (PPH) pilot program with Japan Patent Office (JPO) on November 1, 2011 for providing accelerated patent prosecution procedures by sharing information with each other. Then more and more Offices launched PPH pilot program with CNIPA. Up till now, CNIPA has launched PPH pilot program with 29 Offices, and the PPH pilot program with the patent Offices of the following 27 countries/regions are still valid:
Austria, Brazil (limited number of applications), Canada, Chile, the Czech Republic, Denmark, Egypt, the European Patent Office, Finland, Germany, Hungary, Iceland, Israel, Japan, South Korea, Malaysia, Mexico, Norway, Poland, Portugal, Russia, Sweden, Saudi Arabia, Singapore, the Eurasian Patent Office, the United Kingdom, and the United States of America
Under PPH program, applicants of Chinese invention patent applications can request to accelerate the Chinese patent examination for their applications based on the positive opinions made by one of the above-listed foreign Offices for their corresponding foreign applications.
Generally the applicants may obtain earlier grants for their Chinese applications through PPH program which will speed up the examination process by allowing Chinese examiners to reuse search and examination results made by the participating foreign Offices for their corresponding foreign applications, and meanwhile lower the costs for the prosecution of their Chinese applications.
Requirements and Documents Needed
The following requirements and documents are needed for an applicant to request, via the above PPH project, to accelerate the Chinese examination of its Chinese application.
Part I PPH using the positive examination results made by the participating Offices (normal PPH)
I-1 Requirements
(I-1a) The Chinese application relates to the patent application filed before the participating Office under one of the following conditions:
(1) the Chinese application is a direct application filed under Paris Convention and claims priority to the AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US patent application;
(2) the Chinese application is a Chinese national phase of a PCT application claiming priority to the AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US patent application;
(3) the Chinese application is a direct application filed under Paris Convention, and both the Chinese application and the AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US patent application claim priority to the same AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US prior application;
(4) the Chinese application is a divisional application of a CN parent application claiming priority to the AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US patent application;
(5) the Chinese application is a Chinese national phase of a PCT application having priority or having no priority, and the AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US patent application is the national phase of the same PCT application in the AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US;
(6) the Chinese application is a direct application filed under Paris Convention and claims priority to a PCT application having no priority, and the AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US patent application is the national phase of the same PCT application in the AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US;
(7) the Chinese application is a Chinese national phase of a first PCT application having no priority, and the AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US patent application is the national phase, in AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US, of a second PCT application claiming priority to the first PCT application;
(8) the Chinese application is a Chinese national phase of a second PCT application claiming priority to a first PCT application having no priority, and the AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US patent application is the national phase, in AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US of the second PCT application; or
(9) any divisional application of the Chinese application recited in the above items 1 to 8.
(I-1b) The AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US patent application has one or more claims that are determined to be patentable/allowable by the Patent Office of AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US in its office action.
(I-1c) All claims in the Chinese application, as originally filed or as amended, must sufficiently correspond to one or more of those claims determined to be patentable/allowable in the AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US patent application by the Patent Office of AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US.
Claims are considered to "sufficiently correspond" where they are of the same or similar scope, or the claims in the Chinese application are narrower in scope than the claims in the AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US patent application.
And claims must be in the same category, product or process claims. For example, the patentable Japanese claim is a process of manufacturing a product, then a Chinese product claim that is dependent on the corresponding process claims is not considered to sufficiently correspond.
(I-1d) When or before the applicant files the request for PPH, Notification of Publication issued by CNIPA for the Chinese application has been received.
(I-1e) When or before the applicant files the request for PPH, Notification of Entry into Substantive Examination Procedure issued by CNIPA for the Chinese application has been received; or the applicant can file the request for PPH when submitting the Substantive Examination Request.
(I-1f) When or before the applicant files the request for PPH, NO Chinese office action has been received for the Chinese application from CNIPA.
(I-1g) Any request for PPH filed after 1 March 2012 should be only for the Chinese application filed through E-filing system.
I-2 Documents and information needed
(I-2a) A copy and Chinese/English translation of the office actions issued by the Patent Office of AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US for determining patentable/allowable claims in the AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US patent application; where the Examiner could not understand the translation, he or she can ask the applicant to file a new translation;
(I-2b) A copy and Chinese/English translation of all patentable/allowable claims determined for the AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US patent application by the Patent Office of the AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US; where the Examiner could not understand the translation, he or she can ask the applicant to file a new translation;
(I-2c) A copy of the references cited by examiners in AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US in the above office actions; for patent/patent application references, the applicant is not required to file a copy of such patent/patent application references;
(I-2d) Claim correspondence table to show that claims in the Chinese application and patentable/allowable claims of the AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US patent application sufficiently correspond; and
(I-2e) The application number and publication number or patent number (if granted) of the AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US patent application, and the relationship between the Chinese application and the AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP, FI, HU, IS, IL, JP, KR, MY, MX, NO, PL, PT, RU, SA, SE, SG, GB, or US patent application are required.
Part II PPH using the PCT international written opinion made by the Patent Office of AT, CA, EP, FI, IS, JP, KR, RU, SE, SG and US (PCT-PPH)
II-1 Requirements
(II-1a) The Chinese application relates to the PCT international application that has an IPER (International Preliminary Examination Report), written opinion of ISA (International Searching Authority) or written opinion of IPEA (International Preliminary Examining Authority) issued by the Patent Office of AT, CA, EP, FI, IS, JP, KR, RU, SE, SG or US, under one of the following conditions:
(1) the Chinese application is the national phase of the PCT application having the IPER, written opinion of ISA or written opinion of IPEA;
(2) the Chinese application is the national phase of the PCT application having the IPER, written opinion of ISA or written opinion of IPEA and claiming priority to a prior national/regional application of any PCT state/member;
(3) the Chinese application is the national phase of the PCT application having the IPER, written opinion of ISA or written opinion of IPEA and claiming priority to another PCT prior application;
(4) the Chinese application is a normal national application, and the PCT application claims priority to the Chinese application and has the IPER, written opinion of ISA or written opinion of IPEA;
(5) the Chinese application is the national phase of a second PCT application claiming priority to the PCT application having the IPER, written opinion of ISA or written opinion of IPEA;
(6) the Chinese application is a direct application filed under Paris Convention and claims priority to the PCT application having the IPER, written opinion of ISA or written opinion of IPEA;
(7) the Chinese application is a divisional application of a Chinese national phase of the PCT application having the IPER, written opinion of ISA or written opinion of IPEA; or
(8) the Chinese application is a normal national application and claims the same priority to another normal Chinese national application with the PCT application having the IPER, written opinion of ISA or written opinion of IPEA.
(II-1b) At least one claim of the PCT application is determined to be patentable/allowable in the IPER, written opinion of ISA or written opinion of IPEA made by the JPO, USPTO, KIPO, ROSPATENT, NBPR, APO, SPTO, EPO, PRV, or ILPO.
(II-1c) All claims in the Chinese application as originally filed or as amended, must sufficiently correspond to one or more of those claims determined to be patentable/allowable in the IPER, written opinion of ISA or written opinion of IPEA.
Claims are considered to "sufficiently correspond" where they are of the same or similar scope, or the claims in the Chinese application are narrower in scope than the claims of the PCT application.
And claims must be in the same category, product or process claims. For example, the patentable claim of the corresponding foreign application is a process of manufacturing a product, then a Chinese product claim that is dependent on the corresponding process claims is not considered to sufficiently correspond.
(II-1d) When or before the applicant files the request for PPH, Notification of Publication issued by CNIPA for the Chinese application has been received.
(II-1e) When or before the applicant files the request for PPH, Notification of Entry into Substantive Examination Procedure issued by CNIPA for the Chinese application has been received; or the applicant can file the request for PPH when submitting the Substantive Examination Request.
(II-1f) When or before the applicant files the request for PPH, NO Chinese office action has been received for the Chinese application from CNIPA.
(II-1g) Any request for PPH filed after 1 March 2012 should be only for the Chinese application filed through E-filing system.
II-2 Documents and information needed
(II-2a) A copy and Chinese/English translation of the IPER, written opinion of ISA or written opinion of IPEA for determining patentable/allowable claims in the PCT application; where the Examiner could not understand the translation, he or she can ask the applicant to file a new translation;
(II-2b) A copy and Chinese/English translation of all patentable/allowable claims determined in the IPER, written opinion of ISA or written opinion of IPEA, where the Examiner could not understand the translation, he or she can ask the applicant to file a new translation;
(II-2c) A copy of the references cited by examiners in the IPER, written opinion of ISA or written opinion of IPEA; for patent/patent application references, the applicant is not required to file a copy of such patent/patent application references;
(II-2d) Claim correspondence table to show that claims in the Chinese application and patentable/allowable claims determined in the IPER, written opinion of ISA or written opinion of IPEA sufficiently correspond; and
(II-2e) The international application number of the PCT application and the relationship between the Chinese application and the PCT application are required.
Other information
After receiving the request for PPH, CNIPA will decide whether to approve of accelerating the examination of the Chinese application under PPH. If CNIPA approves, the Chinese application will be assigned to PPH program without notifying such approval to the applicant. However, such approval will be marked in the future office action. If the documents submitted have defects, CNIPA will give the applicant a chance to rectify. And if the request is not approved, the applicant can re-submit the request for one more time.
Allowing the Chinese examiners to use the examination opinions made by one of the foreign Patent Offices within the PPH projects in examining Chinese patent applications is a big good step for Chinese and foreign applicants. In fact, examiners of the CNIPA generally examine independently all patent applications under PPH program, so Chinese examiners will take such positive opinions made by one of the foreign Patent Offices within the PPH projects as a reference and make their opinions independently.
According to our practice experience on PPH program up to now, the best consequence of the PPH program is that it does trigger an office action to be issued quickly. And examiners examine the applications as usual, which means that examiners still raise issues as in other applications which are not under PPH program. For example, for many cases examiners raise inventiveness, go-beyond or non-support issues as usual, although other Offices might have issued positive opinions for the corresponding foreign applications.
Latest Interpretations from the CNIPA
Where a request for the CNIPA-USPTO PPH pilot program is filed, the corresponding US application(s) can be the application which forms the basis of the priority claim, or an application which derived from the US application which forms the basis of the priority claim.
In the following cases, a US application is the application which derived from another US application which forms the basis of the priority claim.
Case 1: If the basis of the priority claim for the Chinese application is a provisional US application, the corresponding application(s) can be a non-provisional application which derived from the provisional US application.
Case 2: If the basis of the priority claim for the Chinese application is a US application, the corresponding application(s) can be the continuation, continuation-in-part or divisional application which derived from the US application.
Feedbacks for PPH requests
1. Feedback on the Version of Chinese Pending Claims
According to the requirements announced by the CNIPA, the pending claims corresponding to the patentable claims of the foreign Offices within the PPH program means the pending claims in a Chinese application have a scope the same as or narrower than that of the allowable/patentable claims of the foreign counterpart.
Specifically, in practice, the CNIPA has a very strict examination on the correspondence of the pending claims in a Chinese application and the allowable/patentable claims of the foreign counterpart. Specifically, PPH requires claims of the Chinese patent application to be: 1) literally identical to the allowed claims of the corresponding application, or 2) narrower in scope than the allowed claims of the corresponding application. The claims narrower in scope which are eligible for PPH should be the allowed foreign claims further limited by an additional technical feature literally recorded as a whole in the original application documents of the Chinese patent application.
If the pending claims of the Chinese application do not meet the above requirements, voluntary amendment before the deadline for voluntary amendment (i.e., within three months from the date of receipt of the Notification for entry into the substantive examination procedure) to the claims will be needed in order to request PPH.
2. Feedback on Office Actions
According to our practice experience on PPH program up to now, in many cases the Chinese Examiners, in their first Office Actions, raised inventiveness issues and cited the same references as the Examiners of the foreign Patent Offices within the PPH projects, or raised go-beyond or other issues, although the same claims are considered allowable by the foreign Patent Offices within the PPH projects. We made conference calls with the Chinese Examiners about the principle of PPH and how examiners use the positive opinions of the foreign Patent Offices within the PPH projects, the Examiners told us that they make their own decision for Chinese applications and take the positive opinions of the foreign Patent Offices within the PPH program as a reference only.
However, the PPH request does trigger a quicker office action than usual. We see the similar situation in our other cases.
Any other feedbacks will be posted once available.
Appendix
A. More information about PPH between CNIPA and JPO
For filing a request for PPH to CNIPA on the basis of a JPO's positive opinion:
Chinese:
https://www.cnipa.gov.cn/2019-12/20191231083803468915.pdf
English:
https://www.cnipa.gov.cn/2019-12/20191231083846715083.pdf
For filing a request for PPH to JPO on the basis of a CNIPA's positive opinion:
Chinese:
https://www.cnipa.gov.cn/2019-12/20191231083906184177.pdf
English:
https://www.cnipa.gov.cn/2019-12/20191231084024083243.pdf
For the above information in Japanese, please see:
http://www.jpo.go.jp/torikumi/t_torikumi/japan_china_highway.htm
B. More information about IP 5 PPH among CNIPA, EPO, JPO, KIPO and USPTO
For filing a request for PPH to CNIPA on the basis of a EPO, JPO, KIPO or USPTO's positive opinion:
Chinese:
https://www.cnipa.gov.cn/2019-12/20191231090205290720.pdf
English:
https://www.cnipa.gov.cn/2019-12/20191231090221393829.pdf