With the intensifying global competition in science and technology and the growing awareness of intellectual property protection, the efficiency of patent examination and the time required to obtain patent grants have become focal points for enterprises and innovators. The Patent Prosecution Highway (PPH), by virtue of its efficient examination mode, has garnered widespread attention and active implementation in China, providing strong support for faster protection and commercialisation of innovative achievements. Actively promoting the implementation and development of PPH programmes and continuously improving related mechanisms can offer innovators a more convenient and efficient patent examination channel.
PPH improvement initiative
The PPH is an international cooperation mechanism for patent examination, aiming to expedite the patent examination process through sharing of examination results among various patent examination authorities under the PPH cooperation agreement. Based on this mechanism, when at least one claim in an applicant's foreign patent application is allowable held by a foreign examination office or has positive examination result in its PCT international phase (‘allowable in the earlier examination’), the applicant can file a request for accelerated examination of their corresponding Chinese patent application with the China National Intellectual Property Administration (CNIPA). Once such request is approved, the Chinese examiner will examine the Chinese application shortly thereafter.
Since launching its first PPH pilot programme in November 2011, the CNIPA has established PPH cooperation with the patent examination authorities of over 30 countries or regions, including the United States, Europe, Japan, South Korea, Russia, etc. To continuously provide applicants with efficient and convenient PPH services, the CNIPA has repeatedly extended the PPH pilot projects in collaboration with multiple foreign offices. In recent years, the CNIPA has received around five thousand PPH requests on average annually.
In 2024, the CNIPA joined the PPH Improvement Initiative under the cooperation between the intellectual property offices of China, the United States, Europe, Japan, and South Korea (IP5), setting the target average timeframes of 2024 for issuing the first Office Action (OA) under the PPH and for responding to applicants' observations under the PPH at three months, to further enhance the user experience. China's joining the improvement initiative has further committed to and ensured the high-speed operation of the Patent Prosecution Highway. According to our practical experience, this target has been achieved.
Requirements for Filing a PPH Request
Filing a PPH request with the CNIPA needs to meet the following requirements:
the corresponding Chinese application is an invention application and has been published;
the PPH request should be filed at the time of requesting substantive examination or after the application has entered the substantive examination procedure;
the pending claims of the Chinese application need to sufficiently correspond to the claims allowable in the earlier examination; and
when the PPH request is filed, the CNIPA has not started substantive examination of the Chinese application (ie, no OA has been issued).
In practice, the original claims of an application often do not correspond to the claims allowable in the earlier examination. Thus, the applicant needs to utilise the voluntary amendment opportunity to amend the pending claims in China to make them sufficiently correspond to the claims allowable in the earlier examination. Sufficient correspondence means that compared with the claims allowable in the earlier examination, the claims in China have identical or similar or narrower scopes. If a PPH request is rejected by the examiner due to insufficient correspondence, then before the CNIPA has started substantive examination of the application, the applicant generally has a chance to submit another PPH request. In that situation, the applicant needs to ensure the sufficient correspondence of the further amended claims, and the further amendments are made within the timeframe for voluntary amendments.
Advantages and disadvantages of using the PPH programme
Advantage one: accelerated examination
After a decision to approve the PPH request is issued, a first OA may be issued in two or three months, or possibly even sooner. The examination will be accelerated, resulting in a quicker grant of patents. As mentioned above, the PPH Improvement Initiative, which China joined in 2024, sets three months as the target average timeframe for issuing a first OA under the PPH, and for responding to applicants' observations under the PPH. According to the data for2024, in cases where the CNIPA accepted a PPH request, the average time from approval of the PPH request to the issuance of a first OA was less than two months, far exceeding the target set by the improvement initiative. Additionally, the average time from approval of the PPH request to closure of the case was less than eight months, which is also quite fast for applicants.
Advantage two: reduced costs
In China, requesting PPH does not incur any official fee. Additionally, according to the data for 2024, in cases where a PPH request was approved, the average number of OAs was no more than two. Correspondingly, due to a reduced number of OAs, applicants can make fewer rounds of responses and spend fewer costs such as attorney fees for responding to OAs or extension fees.
Advantage three: higher allowance rates
The foreign or PCT application based on which a PPH request is filed for the corresponding Chinese application has undergone prior art search and examination and received a positive conclusion. Although patent examination standards vary among countries or regions worldwide, the principles for determining novelty and inventiveness are generally consistent. Therefore, it could be reasonably anticipated that applications under the PPH programme typically have higher allowance rates compared with applications not using the PPH programme.
In practice we also have observed higher allowance rates. Based on the statistics of PPH cases we have handled, almost all PPH requests filed with the CNIPA have been accepted. Among the cases which have been examined under PPH and have closed, about three per cent were granted without receiving any OA; approximately 46 per cent were granted after responding to one OA; about 24 per cent were granted after responding to two OAs; and the remaining cases were granted after responding to multiple OAs (including notification(s) of re-examination in the re-examination stage), accounting for roughly 12 per cent; approximately 47 per cent of the cases were granted after responding to formality issues; among cases receiving novelty and inventiveness rejections, about 8 per cent were granted solely through argument without amendments, while about 27 per cent of the cases were granted after amendments were made. The grant rate was approximately 85 per cent.
Advantage four: applicability to invention applications filed under dual filing
Dual filing is a special system in China, which allows an applicant to submit both an invention patent application and a utility model patent application for the same technical scheme on the same day. This system is designed to offer applicants a more flexible patent protection strategy, enabling them to obtain quick protection by leveraging the relatively rapid grant process of the utility model application while also striving for longer-term protection through the invention patent application. However, for an invention patent application filed under the dual filing strategy, generally prioritised examination is not available. Therefore, when a dual filing strategy is used, the PPH programme is the primary avenue to expedite the examination of the invention patent application.
Disadvantage one: restrictions
While the PPH is used to accelerate patent examination, it also imposes restrictions, especially regarding the timing of requesting PPH and the sufficient correspondence of claims, which means that basically the claims should be limited to those allowable in the earlier examination, and that the amended claims should be filed before the final opportunity for voluntary amendments lapses.
Disadvantage two: potential impact on the strategy of filing divisional applications
In China, there is no continuation or continuation-in-part policy, and filing divisional applications is the only way to continue the prosecution of a patent application. When an initial parent application has closed and a first-generation divisional application is still pending, the condition for filing a second-generation application is that the first-generation divisional application has received a unity objection from the examiner.
In such circumstance, using the PPH for the first-generation divisional application may lead at least two issues:
1. the opportunity to file a second-generation divisional application will be completely lost, since the claims allowable in the earlier examination generally do not have unity defects; and
2. it is impossible to add other desired claims into the first-generation divisional application to seek protection, since the sufficient correspondence requirement limits the claims of the first-generation divisional application to only those allowable in the earlier examination.
Therefore, applicants need to consider, during the time window for filing divisional applications from the parent application, besides the one intended to request the PPH, whether it is necessary to file additional divisional applications in order to ensure that all other desired claims are included for seeking protection.
Conclusion
The implementation of the PPH Improvement Initiative signals the CNIPA’s renewed commitment to the PPH programme, and the CNIPA has also achieved shorter examination timelines, fulfilling its commitment. China, along with Europe, the United States, Japan, and South Korea, has adopted the same examination timeline targets, not only enabling applicants to more accurately anticipate the examination progress and thus better plan their patent filing strategies and business activities, but also further promoting the development of international patent examination cooperation.
The continuous investment of the CNIPA in the PPH programme brings significant benefits to innovation entities. As previously noted, the PPH programme can expedite patent examination, shorten the time to grant, and reduce patent costs. If innovation entities can conduct in-depth research and flexibly apply the PPH rules, it will greatly benefit their patent strategies.
Should the innovator have any inquiries or needs regarding the PPH application, please do not hesitate to contact us. Leveraging our extensive experience in the field of intellectual property, we offer comprehensive services including PPH project evaluation and PPH application, covering all aspects of patent planning, application, and protection. We are committed to assisting innovators in efficiently utilizing the PPH mechanism to shorten the examination cycle and enhance the grant rate.
If you have any question about the protection of intellectual property rights, please feel free to send us emails. For patent-related matters, please send to info@afdip.com. For trademark/ litigation/ legal matters, please send to info@bhtdlaw.com.
This article was originally published by IAM/WTR.
