When patent applications based on the PCT or Paris Convention enter China (hereinafter referred to as “patent applications”) and seek expedited examination, applicants may consider choosing the Patent Prosecution Highway (PPH) or priority examination. This article primarily introduces the PPH.
1. Development of PPH in China
PPH was first proposed and implemented by the United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) in 2006.
In November 2011, the China National Intellectual Property Administration (CNIPA) launched its first bilateral PPH pilot programs with the JPO and USPTO. Since then, bilateral/multilateral PPH pilot programs have been initiated with 32 other foreign patent offices, including those of Germany, South Korea, Russia, Denmark, Finland, Mexico, Austria, Poland, Singapore, Canada, the United Kingdom, Spain, Portugal, and the Eurasian Patent Office.
2. Advantages of PPH
2.1 Accelerated Examination
The CNIPA’s target for the average period from the first PPH examination opinion notification to the PPH response to the applicant’s opinion in 2024 is set at 3 months. Therefore, patents will be expedited. After PPH approval, the first examination opinion notification is generally received within 1-2 months, after which the application enters the regular examination process and can be responded to according to standard application requirements and deadlines.
2.2 Cost Savings
Application costs will be reduced, and the number of responses to examination opinion notifications will decrease.
2.3 High Authorization Rate
The likelihood of the application being granted is increased.
3. Common PPH Models
3.1 Regular PPH
This refers to the applicant using the results of the domestic work of the initial application receiving office to request PPH from the subsequent application receiving office.
3.2 PCT-PPH
This refers to the applicant using the results of the PCT international phase work to request PPH from the relevant patent office.
3.3 PPH-MOTTAINAI
This model expands the acceptance conditions of regular PPH, including scenarios where the initial application originates from another office or the subsequent application receiving office first issues the examination results.
4. Conditions for Requesting PPH in China
4.1 Eligible Application Types
The CNIPA application can be a domestic application, a divisional domestic application, a PCT national phase application, or a divisional PCT national phase application. The type of CNIPA application must be an invention patent application.
4.2 Publication Requirement
The application must be published, meaning that the applicant must have received a notice of publication for the invention patent application from CNIPA before or at the time of submitting the PPH request.
4.3 Substantive Examination Requirement
The application must have entered the substantive examination stage, meaning that the applicant must have received a notice of entering the substantive examination stage from CNIPA before or at the time of submitting the PPH request. An allowable exception is that the applicant can submit the PPH request simultaneously with the request for substantive examination. CNIPA should not have issued any examination opinion notifications before or at the time of the PPH request.
4.4 Electronic Submission
The application must be filed electronically.
4.5 Claim Correspondence
The claims in the Chinese application should have the same scope as or a narrower scope than those in the corresponding application.
4.6 Positive Examination Opinion
For regular PPH, the corresponding application must have one or more claims recognized as patentable/grantable. For PCT-PPH, the latest international phase work results of the corresponding PCT application, such as the written opinion of the International Search Authority (WO/ISA), the written opinion of the International Preliminary Examining Authority (WO/IPEA), or the International Preliminary Examination Report (IPER), must indicate that at least one claim is patentable/grantable (i.e., novel, inventive, and industrially applicable).
5. Timing for Submitting PPH Requests
5.1 PPH Request Date
The PPH request can be submitted after the application enters the substantive examination stage but before the start of substantive examination. An exception allows the applicant to submit the PPH request simultaneously with the request for substantive examination after the national publication of the application.
5.2 Submission Limits
For the same application, the applicant has up to two opportunities to submit PPH requests.
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Country or Region |
Original or English translation |
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Japan |
Decision to Grant a Patent（特许查定） |
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Notification of Reason for Refusal（拒绝理由） |
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Decision of Refusal（拒绝决定） |
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Appeal Decision（审判） |
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United States |
Notice of Allowance and Fees Due |
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Non-Final Rejection |
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Final Rejection |
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Germany |
Granted Patent Publication |
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Pruefungsbescheide |
Communications of the Examiner |
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Erteilungsbeschluss |
Final Decision to Grant a Patent |
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Granted Patent Application |
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Russia |
Inquiry of the substantive examination |
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Decision to grant a patent of Russian Federation on the invention |
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Notification under the results of the test for the patentability of the application |
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Finland |
Välipäätös |
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Hyväksyvä välipäätös |
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Denmark |
Godkendelse |
Grant |
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Berigtigelse af bilag |
Intention to Grant |
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Mexico |
Decision to Grant a Patent |
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Notification of Reasons for Refusal |
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Decision of Refusal |
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Appeal Decision |
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Austria |
Erteilungsbeschluss |
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Vorbescheid |
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South Korea |
Notice of Grounds for Rejection |
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Decision of Rejection |
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Decision to Grant a Patent |
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Poland |
Examination Report |
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Decision of partially refusing a Patent |
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Decision of granting a Patent |
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Appeal Decision |
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Canada |
Examiner’s Report |
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Final Action |
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Singapore |
Written opinions |
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Search and Examination reports |
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Examination reports |
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Portugal |
Relatório de Pesquisa com Opinião Escrita |
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Relatório de Exame |
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Publicação da Concessão |
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United Kingdom |
Notification of Grant letter |
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European Patent Office |
Comunication under Rule 71(3) EPC |
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Communication from the Examining Division |
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Annex to the communication |
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Search report |
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Search opinion |
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Iceland |
Fyrirhuguð útgáfa einkaleyfis |
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Tilkynning um veitingu einkaleyfis |
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Sweden |
Tekniskt 1föreläggande |
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Slutföreläggande |
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Israel |
Notice before acceptance(P.C.13) |
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Notice of defects before acceptance(P.C.27) |
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Notice of defects in Patent Application(P.C.25) |
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Notice of defects in Patent Application(P.C.26) |
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Hungary |
Felhívás nyilatkozattételre és hiánypótlásra/megadási és kinyomtatási díj megfizetésére |
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Egypt |
Decision of grant a patent |
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Notification of reasons for amendment |
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Decision of conversion to the ministries concerned |
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Decision of Appeal |
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Czech Republic |
Search Report-indicating documents which are relevant |
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First Substantive Examination Report – indicating obstacles to granting a patent |
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Decision of Partially Refusing Patent-indicating claim(s) and reasons |
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Decision of Granting Patent |
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Appeal Decision |
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Chile |
Decision to Grant a Patent |
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Examiner’s Report |
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Brazil |
Decision to Grant |
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Eurasian Patent Office |
Notification on the readiness to grant Eurasian patent |
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Decision to grant Eurasian patent |
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Malaysia |
Substantive Examination Clear Report |
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Substantive Examination Adverse Report |
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Notice of Refusal |
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Norway |
Godkjenning til meddelelse |
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Uttalelse 或 Realitetsuttalelse |
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Saudi Arabia |
Decision to Grant a Patent |
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Notification of Reasons for Refusal |
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Appeal Decision |
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France |
Preliminary Search report |
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Written opinion |
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“B” publication |
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Search report(attached to “B” publication) |
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Draft Rejection Decision |
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Rejection Decision |
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Decision after Opposition procedure |
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Note: At this time, the PPH request should be based on an application submitted to INPI after May 22, 2020.
7. Disadvantages of PPH
7.1 Limited Request Opportunities
Only two request opportunities are allowed, and the formal requirements and correspondence requirements are extremely strict.
7.2 Scope Limitations
The applicant may need to narrow the scope of the claims in the Chinese patent application based on the claims of the corresponding foreign granted patent. In other words, when using the PPH to expedite examination, it is not possible to obtain broader protection than that of the corresponding application’s claims.
7.3 Risk of Exceeding Modification Scope
In Chinese examination practice, examiners have always been strict about examining modifications beyond the scope. If the allowable claims of the corresponding application differ significantly from the original claims, modifying the Chinese patent application based on the allowable claims of the corresponding application may result in modifications exceeding the allowable scope.
8. Fees
Currently, no official fees are required for PPH requests.
Conclusion
As a beneficial route for accelerated examination, the PPH is increasingly being utilized by applicants. Check whether your company’s patent applications meet the PPH requirements!