Requirements for Requesting Patent Prosecution Highway in China
by Using Opinions Made by USPTO, JPO and KIPO
Requesting to accelerate the Chinese patent examination based on the positive opinions made by Japan Patent Office (JPO), United States Patent and Trademark Office (USPTO) and the Korean Intellectual Property Office (KIPO) is available now or soon, since the State Intellectual Property Office (SIPO) of China recently commenced a pilot project for the Patent Prosecution Highway (PPH) with JPO on November 1, 2011 and with USPTO on December 1, 2011 respectively and will commence the same PPH project with KIPO on March 1, 2012.
Applicants may obtain earlier grants for their Chinese application through such PPH projects which will speed up the examination process by allowing Chinese examiners to reuse search and examination results made by JPO, USPTO or KIPO for the corresponding applications, and meanwhile lower costs for the prosecution of their Chinese application.
The following highlights requirements and documents are needed for an applicant to request, via the above PPH project, to accelerate the Chinese examination on its Chinese application which has been filed within SIPO, and relates to a Japanese, US or Korean application on the basis of JPO, USPTO or KIPO's examination opinion (see Part I), or relates to a PCT international application on the basis of JPO, USPTO or KIPO's international search and examination written opinion (see Part II).
Part I PPH using JPO, USPTO or KIPO's office action (normal PPH)
I-1 Requirements
(I-1a) The Chinese application relates to the Japanese, US or Korean application under one of the following conditions:
(1) the Chinese application is a direct application under Paris Convention and claims the priority of the Japanese, US or Korean application, or the Japanese, US or Korean application is the first prior application claimed as one priority in the Chinese application;
(2) the Chinese application is a Chinese national phase of a PCT application claiming the priority of the Japanese, US or Korean application;
(3) the Chinese application is a direct application under Paris Convention and claims a priority of same JP, US or KR prior application as the Japanese, US or Korean application, (that is the Chinese application and the Japanese, US or Korean application both claim a priority of the same JP, US or KR prior application respectively);
(4) the Chinese application is a divisional application of a CN parent application claiming the priority of the Japanese, US or Korean application;
(5) the Chinese application is a Chinese national phase of a PCT application having priority or having no priority, and the Japanese, US or Korean application is the national phase of this same PCT application in JPO, USPTO or KIPO;
(6) the Chinese application is a direct application under Paris Convention and claims the priority of a PCT application having no priority, and the Japanese, US or Korean application is the national phase of this same PCT application in JPO, USPTO or KIPO;
(7) the Chinese application is a Chinese national phase of a first PCT application having no priority, and the Japanese, US or Korean application is the national phase, in JPO, USPTO or KIPO, of a second PCT application claiming priority of the first PCT application;
(8) the Chinese application is a Chinese national phase of a second PCT application claiming the priority of a first PCT application having no priority, and the Japanese, US or Korean application is the national phase, in JPO, USPTO or KIPO, 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 Japanese, US or Korean application has one or more claims that are determined to be patentable/allowable by JPO, USPTO or KIPO 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 Japanese, US or Korean application by the JPO, USPTO or KIPO.
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 Japanese, US or Korean 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 SIPO 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 SIPO 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 is received for the Chinese application from SIPO.
(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 Chin ese or English translation of the office actions issued by JPO, USPTO or KIPO for determining patentable/allowable claims in the Japanese, US or Korean application; where the Examiner could not understand the translation, he or she can asks the applicant to re-file the translation;
(I-2b) A copy and Chinese or English translation of all patentable/allowable claims determined for the Japanese, US or Korean application by JPO, USPTO or KIPO; where the Examiner could not understand the translation, he or she can ask the applicant to re-file the translation;
(I-2c) A copy of the references cited by examiners in JPO, USPTO or KIPO in the above office actions; for patent/application references, the applicant is not required to file a copy of such patent/application references;
(I-2d) Claim correspondence table to show that claims in the Chinese application and patentable/allowable claims determined for the Japanese, US or Korean application in JPO, USPTO or KIPO's office action sufficiently correspond; and
(I-2e) The application number and publication number or patent number (if granted) of the Japanese, US or Korean application, and the relationship of the Chinese application and the Japanese, US or Korean application are required.
Part II PPH using the PCT international written opinion by JPO, USPTO or KIPO
(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 JPO, USPTO or KIPO as ISA or IPEA, 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 of 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 of another PCT prior application;
(4) the Chinese application is a normal national application, and the PCT application claims the priority of 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 of the PCT application having the IPER, written opinion of ISA or written opinion of IPEA;
(6) the Chinese application is a direct application under Paris Convention and claims the priority of 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 of 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 or KIPO.
(II-1c) Allclaims 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 determined 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 SIPO 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 SIPO 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 is received for the Chinese application from SIPO.
(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 or 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 asks the applicant to re-file the translation;
(II-2b) A copy and Chinese or 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 asks the applicant to re-file the 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/application references, the applicant is not required to file a copy of such 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 IPEAsufficiently correspond; and
(II-2e) The international application number of the PCT application, and the relationship of the Chinese application and the PCT application are required.
After receiving the request for PPH, SIPO will decide whether to approve for accelerating the examination of the Chinese application under PPH. If SIPO 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, SIPO will give the applicant one more 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 JPO, USPTO or KIPO in examining Chinese patent applications is a big good step for the State IP Office of China and foreign applicants. In the past the SIPO asks its examiners to examine independently, so Chinese examiners would not be allowed to consider such positive opinions made by JPO, USPTO or KIPO.Although these programs will last for one year, they bring good opportunities to foreign applicants.
However, for the possible consequence of the PPH programs in China, there are probably some uncertainties. One of big issues we think is the go-beyond issue. Since SIPO follows very strict rules for examining amendments, Chinese examiners previously raised a lot of go-beyond issues for most amendments made corresponding to allowable version of US claims.We hope the Chinese examiners will make some changes due to SIPO's commencement for new PPHs. We will report more when the programs go further. Should you have any questions please feel free to ask.
More information about PPH between SIPO and JPO
For filing a request for PPH to SIPO on the basis of a JPO's positive opinion:
Chinese:
http://www.sipo.gov.cn/ztzl/ywzt/pph/zn/201105/
P020111020471548126149.pdf
English:
http://www.sipo.gov.cn/ztzl/ywzt/pph/zn/201105/
P020111020471578435218.pdf
For filing a request for PPH to JPO on the basis of a SIPO's positive opinion:
Chinese:
http://www.sipo.gov.cn/ztzl/ywzt/pph/zn/201105/
P020111020471578906075.pdf
English:
http://www.sipo.gov.cn/ztzl/ywzt/pph/zn/201105/
P020111020471579068454.pdf
For the above information in Japanese, please see:
http://www.jpo.go.jp/torikumi_e/t_torikumi_e/
japan_china_highway_e.htm
More information about PPH between SIPO and USPTO
For filing a request for PPH to SIPO on the basis of a USPTO's positive opinion:
Chinese:
http://www.sipo.gov.cn/ztzl/ywzt/pph/zn/201111/
P020111125620059238561.pdf
English:
http://www.sipo.gov.cn/ztzl/ywzt/pph/zn/201111/
P020111125620089395605.pdf
For filing a request for PPH to USPTO on the basis of a SIPO's positive opinion:
Chinese:
http://www.sipo.gov.cn/ztzl/ywzt/pph/zn/201111/
P020111125620089555721.pdf
English:
http://www.sipo.gov.cn/ztzl/ywzt/pph/zn/201111/
P020111125620089706106.pdf
Chinese (PCT):
http://www.sipo.gov.cn/ztzl/ywzt/pph/zn/201111/
P020111125620089866261.pdf
English (PCT):
http://www.sipo.gov.cn/ztzl/ywzt/pph/zn/201111/
P020111125620090018340.pdf
Materials at USPTO:
http://www.uspto.gov/patents/init_events/pph/index.jsp
http://www.uspto.gov/patents/init_events/pph/pph_cn.jsp
http://www.uspto.gov/patents/init_events/pph/pct_pph_cn.jsp
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