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FAQ regarding Filing a Request for PPH to the SIPO
Linda Liu & Partners
The pilot period of a PPH pilot program commenced on November 1, 2011. For your reference, we have summarized the following FAQ regarding filing a request for PPH to the SIPO.
1. Must a request for PPH be filed based on claims of an application granted by the JPO?
It is possible to file a PPH request based on national work products from the JPO or based on the PCT international work products from the JPO.
In the situation where the national work products from the JPO are used, at least one corresponding application must exist in the JPO that has one or more claims that are determined to be patentable/allowable by the JPO. Claims that are “determined to be allowable/patentable” means that the JPO examiner explicitly identified the claims to be allowable/patentable in the latest office action, even if the application is not granted for patent yet.
In the situation where PCT international work products from the JPO are used, it is required that the latest work product in the international phase of a PCT application corresponding to the CN application, namely the Written Opinion of International Search Authority (WO/ISA), the Written Opinion of International Preliminary Examination Authority (WO/IPEA) or the International Preliminary Examination Report (IPER), indicates at least one claim as patentable/allowable (from the aspect of novelty, inventive steps and industrial applicability).
The applicant cannot file a request under PCT-PPH on the basis of an International Search Report (ISR) only.
2. Opportunity for filing a PPH request
To file a PPH request, the CN application shall meet the following requirements:
(1)The CN application must have been published before, or when, filing a PPH request.
(2) The CN application must have entered into the substantive examination stage.
The applicant may file a PPH request simultaneously with the Request for Substantive Examination.
(3)The SIPO has not begun examination of the application at the time of filing a PPH request, namely, no office action has been issued yet.
The applicant may file a PPH request for a CN application satisfying the aforesaid requirements simultaneously with the Request for Substantive Examination or file it as soon as possible after the receipt of a Notification of Entering into Substantive Examination for Patent Application for Invention.
3. Documents to be submitted and detailed requirements on these documents
(1)Request Form for Participation in the Patent Prosecution Highway (PPH) Pilot Program
(2)Copies of all office actions that were issued for the corresponding application by the JPO, and Chinese or English translations of them.
Under the PCT-PPH, it is necessary to submit a copy of the latest international work product that indicates the claims to be patentable/allowable and its Chinese or English translation.
Please be kindly advised that the translations shall be in a unified language. In other words, in a situation where plural office actions/PCT international work products are submitted, the applicant may select to translate them all into either Chinese or English, rather than Chinese and English in combination.
(3)Copies of all claims determined to be patentable/allowable by the JPO, and translations of them.
Please note that the translations mentioned in the above items 3-(2) and 3-(3) need not to be precise but to be understandable to the examiner.
(4)Copies of references cited in the work products of the corresponding application
Documents that are only referred to as references and consequently do not consist of the reasons for refusal do not have to be submitted.
If the references are patent documents, the applicant does not have to submit them.
Non-patent literature must always be submitted.
Translations of the references are unnecessary.
(5)Claim correspondence table, which indicates how all claims in the CN application sufficiently correspond to the patentable/allowable claims.
4. Is it possible to make correction to an application in a request for PPH?
There is no opportunity for the applicant to make initiative correction to an application at the time of filing a PPH request.
In instances where the request does not meet all the requirements, the applicant will be notified and the defects in the request will be identified. The applicant may be given a one-time opportunity to correct certain specified defects. The defects are generally limited to the following two cases:
(1)the translation is not understandable; and
(2)the SIPO itself cannot obtain some cited references.
If the submitted correction still does not meet all the requirements, the applicant will be notified and may be given a one-time opportunity to resubmit the request. If the resubmitted request is still not approved, the application will await action in its regular turn.
5. Is it possible that a corresponding CN application will be directly granted for patent, or that the grant for the corresponding CN application will be accelerated, after a PPH request is approved?
When the SIPO decides that the request is acceptable, the application is assigned a special status for an accelerated examination under the PPH. The CN application will be examined prior to the others, and an office action will be issued. The approval of a PPH request does not mean that the corresponding CN application will be directly granted a patent right. Instead, the SIPO will still examine the application in accordance with relevant provisions of the Chinese patent laws.
6. Is there an opportunity to amend the claims after a PPH request is approved?
It is possible to amend the claims after a PPH request is approved. Any amended or added claims need not to sufficiently correspond to the claims indicated as patentable/allowable in the corresponding application. Any amendment outside of the claim correspondence requirement is subject to examiners’ discretion.
7. Advantages of an application under PPH relative to applications under the regular prosecution
Once a PPH request is approved, the application will enter into a special status for an accelerated examination. In general, an office action for an application under the PPH will be issued at least six months earlier than that for regular applications. Additionally, the response to the office action for an application under the PPH will also be examined preferentially.
