What is PPH?
The Patent Prosecution Highway (PPH) is implemented based on a bilateral or multilateral agreement between two Offices and allows the later Office (OLE) to accelerate examination, at the applicant’s request, if a corresponding application has been found allowable/patentable by the earlier Office (OEE).
The PPH is expected to speed up the patent examination, increase the grant rate, and reduce examination costs. See more about the flowchart of PPH below:
Types of PPH Programs
- Normal PPH: Based on the examination results of OFF (the office of first filing) through the Paris Convention route.
- PCT-PPH: Based on the examination results during the international phase of a PCT application.
Conditions for PPH Eligibility
Bilateral or Multilateral Agreement:
The CNIPA has entered into PPH agreements with 30 countries/regions (e.g., USPTO, JPO, EPO, SK). Ensure that the originating country/region has a PPH agreement with China. (check the list of contracting states with China)
Application Status:
The Chinese patent application must have been published and entered substantive examination, but must not have begun the examination process.
Patentable claims:
All claims in CNIPA (OLE) must sufficiently correspond to one or more of those claims determined to be patentable/ allowable by the corresponding patent office.
When can you request the PPH in China?
Regardless of what type of PPH you make, the applicant only can submit a request with CNIPA when:
1. while requesting a substantive examination; or
2. within 3 months from the receipt of entering the substantive examination stage.
Required documents for requesting PPH in China?
- PPH request form;
- Copies (Chinese translations may be required) of all substantive examination actions of the OFF or all the work products of PCT ;
- Copies (Chinese translations may be required) of all claims that have been found allowable/patentable; and
- Copies of all the prior art (including non-patent literature) cited by the examiner.
Common Questions About PPH
Can I modify claims for a PPH request?
Yes, but the claims in CNIPA must remain substantially similar/ same to the allowed claims in the originating office (OEE).
What happens if my PPH request is rejected?
You can try amending your PPH request one more time. If 2nd request is rejected again, your application will proceed under the standard examination track without affecting the final decision on patentability.
Is PPH free?
There is NO official fee to request a PPH with CNIPA so far, the applicant will only be charged the attorney fees and translation fees (if required).
Further information
See more at CNIPA’s guidelines: https://www.cnipa.gov.cn/col/col46/index.html
See more at WIPO’s guidelines: http://www.wipo.int/pct/en/filing/pct_pph.html
If you need assistance with preparing the documents or submitting the PPH request based on another allowed patent, feel free to ask at: contact@gbaiplawyer.com
