PPH, the Best Way to Expedite Prosecution of Patents in China?

PPH, literally the Patent Prosecution Highway, is also an acceleration method of facilitating the prosecutions of patents in China, different from prioritized examination system, and the pre-examination system.

However, not every applicant will pass the prioritized examination system or the pre-examination.

Specifically, patent applications will be entitled to Prioritized Examination if they involve national key development industries such as energy conservation and environmental protection, new generation information technology, biology, high-end equipment manufacturing, new energy, new materials, new energy vehicles, and smart manufacturing.

And the pre-examination applications in China must be within the technical field of the corresponding IP protection center and the requirements of novelty and inventiveness during pre-examination are the same as those during substantive examination.

In addition, there are quota limitations for both prioritized examination and the pre-examination.

Thus, for those with time-sensitive patents to protect, it may be a good strategy to speed up the prosecution of patents in China through PPH.

What is PPH?

PPH is a framework in which an application whose claims have been determined to be patentable in the Office of First Filing (OFF) is eligible to go through an accelerated examination in the Office of Second Filing (OSF) with a simple procedure upon applicant’s request.

China is party to PPH agreements with many countries including the United States. Simply put, if you file a US application first, and receive a Notice of Allowance or an Office Action indicating one or more allowable claim(s), you may use it to expedite the examination procedure of its counterpart Chinese application.

What are the types of PPH?

Generally speaking, there are two types of PPH: conventional PPH and PCT-PPH.

Just as the name implies, conventional PPH refers to PPH made through the Paris Convention route, while PCT-PPH refers to PPH made through PCT route.

In other words, when the OFF considers that the patent application can be granted, the applicant can submit a request for conventional PPH to accelerate examination of the corresponding application to the OSF.

Also, if a PCT international search report indicates that there is at least one claim is determined to be allowable or patentable, the applicant can file the request for PCT-PPH based on the report to accelerate examination when entering the national phase.

When can you file the PPH request?

When the application has entered the phase of substantive examinatio but has not yet received an office action, you can file the PPH request.

It is recommended that you file PPH request at the time of filing the Request for Substantive Examination.

What are the pros and cons of PPH?

The pros

PPH could bring the following two benefits to applicants obviously.

1. Accelerated examination

If a request for PPH is granted, you may receive the first Office Action within 2 months, several months earlier than ordinary applications.

Moreover, the average time from filing a PPH request to obtaining a final examination result is approximately 11 months, which is even shorter than the typical timeline of receiving a first office action in regular examination procedures.

2. Reduced prosecution cost

PPH request in China is free of official fees and will only incur little sum of service fees. It also cuts down prosecution costs as the number of OAs will be reduced.

The cons

For applicants who wants to get a patent faster and more efficiently, PPH undoubtedly holds great appeal. However, if you intend to select PPH to expedite the prosecution of patents in China, it is essential to be aware of its limitations.

1. Limitations of the overall application cycle

It can be seen from the above analysis that whether it is accelerated through conventional PPH or PCT-PPH, there is a very clear prerequisite that the OFF/PCT international search report indicates that there is at least one claim patentable.

The overall cycle must not only consider the time to get granted through PPH request but also include the time to obtain allowable claims in corresponding countries. Actually in practice, the applicant usually has plenty of time to wait for a potential allowance of a counterpart application. This timeframe can range from several months to as long as two years.

Taking PCT-PPH as an example, the time to receive the international search report is 16 months from the priority date, or 9 months from the date of receipt of the search copy by the International Searching Authority.

Just in terms of acceleration effect, PPH is still not as good as Prioritized Examination whose overall cycle is about 12 months and pre-examination whose overall cycle is 3 months for invention patents.

Even if a patent application in China is accelerated by acceleration method of other countries and PPH, for instance, you file a Japanese patent application with a request for accelerated examination first and then file a Chinese patent application with a request for PPH, the Chinese patent application also takes about 6+11 months to get granted at the earliest.

In addition, the applicant may not meet the requirements for accelerating the examination procedure of patents in other countries. For example, accelerated examination system of Japanese applications can be applied to only six types of application: Working-related applications; Internationally-filed applications; Applications filed by SMEs, individuals, universities, public research institutes etc.; Green-technology related applications; Earthquake Disaster Recovery Support-related applications; and the Asian Business Location Law-related applications.

Hence, if an application has no claims allowed in other countries, it is clearly a roundabout way to accelerate the prosecution of patents in China by giving up Prioritized Examination and pre-examination, but filing a request for PPH.

However, if an application has all or part of its claims allowed in one country, a PPH request is indeed a viable method for accelerating the prosecution.

2. Limitations of Claim Amendments

As a prerequisite to requesting a PPH, all claims in the Chinese application requesting the PPH must sufficiently correspond to the patentable/allowable claims in the corresponding applications.

That is, correspondence of claims refers to the scope of the claims seeking accelerated examination in CNIPO shall be the same with or narrower than that is allowed by other offices of PPH agreement.

Conclusion

The above is a brief introduction on the PPH system with two sides in Chinese practice. We do recommend you to make wise use of PPH for your Chinese applications, especially if you find the allowed claims in other counterpart applications give a satisfying protections scope.