Procedures to File a Request to the CNIPA (China National
Intellectual Property Administration) for Patent Prosecution Highway Pilot Program between the CNIPA and the PRH (Finnish
Patents and Registration Office)
The PPH pilot program commenced on January 1, 2013 for a duration of one year. According to the agreement between the CNIPA and the PRH, the PPH pilot program has been extended for an indefinite time period, starting on January 1, 2014.
The Offices may terminate the PPH pilot program if the volume of participation exceeds manageable level, or for any other reason. Ex Ante notice will be published if the PPH pilot program is terminated.
Part I
PPH using the national work products from the PRH
Applicants can request accelerated examination by a prescribed procedure including submission of relevant documents on an application which is filed with the CNIPA and satisfies the following requirem
ents under the CNIPA-PRH Patent Prosecution Highway (PPH) pilot program based on the PRH application.
When filing a request for the PPH pilot program, an applicant must submit a request form “Request for Participation in the Patent Prosecution Highway Program” to the CNIPA.
1. Requirements
(a) The CNIPA application (including PCT national phase application) is
(i) an application which validly claims priority under the Paris Convention to the PRH
application(s) (examples are provided in ANNEX I, Figure A, B, C, F, G and H), or (ii) a PCT national phase application without priority claim (examples are provided in Annex I, Figure I), or
(iii) a n application which validly claims priority under the Paris Convention to the PCT application(s) without priority claim (examples are provided in ANNEX I, Figure J, K and L).
The CNIPA application, which validly claims priority to multiple PRH or direct PCT applications, or which is the divisional application validly based on the originally filed application that is included in (i) to (iii) above, is also eligible.
(b) At least one corresponding application exists in the PRH and has one or more
claims that are determined to be patentable/allowable by the PRH.
The corresponding application(s) can be the application which forms the basis of the priority claim, an application which derived from the PRH application which forms the basis of the priority claim (e.g., a divisional application of the PRH application or an application which claims domestic priority to the PRH application (see Figure C in Annex I)), or a PRH national phase application of a PCT application which validly claims priority to the PRH application(s) (see Figures H in Annex I), a PRH national phase application of a PCT application which validly claims priority to another PCT application(s) without priority claim (see Figures K and L in Annex I), or a PRH national phase application of a PCT application without priority claims (see Figure I and J in Annex I).
Claims are “determined to be allowable/patentable” when the PRH examiner explicitly identified the claims to be “allowable/patentable” in the latest office action, even if the application is not granted for patent yet.
Office actions mentioned above are:
“Office Action”
“Communication of Acceptance”
(The heading of the communication in Finnish is “Hyväksyvä välipäätös”)
(c) All claims in the CNIPA application (for which an accelerated examination under the
PPH pilot program is requested), as originally filed or as amended, must sufficiently correspond to one or more of those claims determined to be patentable/allowable in the PRH.
Claims are considered to “sufficiently correspond” where, accounting for differences due to translations and claim format, the claims in the CNIPA are of the same or similar scope as the claims in the PRH, or the claims in the CNIPA are narrower in scope than the claims in the PRH.
In this regard, a claim that is narrower in scope occurs when a PRH claim is amended to be further limited by an additional technical feature that is supported in the specification (description and/or claims).
A claim in the CNIPA which introduces a new/different category of claims to those claims
determined to be patentable/allowable in the PRH is not considered to sufficiently correspond. For example, the PRH claims only contain claims to a process of manufacturing a product, then the claims in the CNIPA are not considered to sufficiently correspond if the CNIPA claims introduce product claims that are dependent on the corresponding process claims.
It is not necessary to include “all” claims determined to be patentable/allowable in the PRH in an application in the CNIPA (the deletion of claims is allowable). For example, in the case where an application in the PRH contains 5 claims determined to be patentable/allowable, the application in the CNIPA may contain only 3 of these 5 claims.
Any claims amended or added after the grant of the request for participation in the PPH pilot program but before the CNIPA first office action must sufficiently correspond to the claims indicated as patentable/allowable in the PRH application. Any claims amended or added after the first CNIPA action need not to sufficiently correspond to the claims indicated as patentable/allowable in the PRH when applicants need to amend claims in order to overcome the reasons for refusal raised by CNIPA examiners. Any amendment outside of the claim correspondence requirement is subject to examiners’ discretion.
Note that any applicant to the CNIPA may amend the application including its claims on its or his own initiative when a request for substantive examination is made, and within the time limit of three months after the receipt of the Notice of Invention Patent Application Entering into Substantive Examination Stage. Therefore, an applicant needs to care about the time limit of amendment in order to make claims in the CNIPA application correspond to the claims determined to be patentable/allowable in the PRH.
(d) The CNIPA application must have been published.
The applicant must have received the Notice of Publication of Invention Patent Application issued from the CNIPA before, or when, filing the PPH request.
(e) The CNIPA application must have entered into substantive examination stage.
The applicant must have received the Notice of Invention Patent Application Entering into Substantive Examination Stage issued from the CNIPA before, or when, filing the PPH request.
Note that as an exception, the applicant may file a PPH request simultaneously with the Request for Substantive Examination.
(f) The CNIPA has not begun examination of the application at the time of request for
the PPH.
The applicant should have not received any office action issued from the substantive examination departments in the CNIPA before, or when, filing the PPH request.
(g) The CNIPA application must be electronic patent application.
If the application is a paper based application, the applicant should first transfer his application into electronic patent application and then file a PPH request.
2. Documents to be submitted
Documents (a) to (c) below must be submitted by attaching to “Request for Participation in the Patent Prosecution Highway Program”.
Note that even when it is not needed to submit certain documents below, the name of the documents must be listed in the “Request for Participation in the Patent Prosecution Highway Program” (Please refer to the example form below for the detail).
(a) Copies of all office actions (which are relevant to substantial examination for
patentability in the PRH) which were issued for the corresponding application by the PRH, and translations of them.
Either Chinese or English is acceptable as translation language. If it is impossible for the examiner to understand the translated office action, the examiner can request the applicant to resubmit translations.
(b) Copies of all claims determined to be patentable/allowable by the PRH, and
translations of them.
Either Chinese or English is acceptable as translation language. If it is impossible for the examiner to understand the translated claims, the examiner can request the applicant to resubmit translations.
(c) Copies of references cited by the PRH examiner
The documents to be submitted are those cited in the above-mentioned office actions.
Documents which 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 them1.
When the CNIPA does not possess the patent document, the applicant has to submit the patent document at the examiner’s request. Non-patent literature must always be submitted. The translations of the references are unnecessary.
When the applicant has already submitted above documents (a) to (c) to the CNIPA through simultaneous or past procedures, the applicant may incorporate the documents by reference and does not have to attach them.
3. Example of “Request for Participation in the Patent Prosecution Highway 1Note that even when it is not needed to submit copies of references, the name of the references must be listed in the “Request for Participation in the Patent Prosecution Highway Pilot Program”.
Program” for filing request of an accelerated examination under the PPH pilot program
(a) Circumstances
When an applicant files a request for an accelerated examination under the PPH pilot program to the CNIPA, the applicant must submit a request form “Request for Participation in the Patent Prosecution Highway Program”.
The applicant must indicate that the application is included in (i) to (iii) of 1. (a), and that the accelerated examination is requested under the PPH pilot program. The application number, publication number, or a patent number of the corresponding PRH application(s) also must be written.
In the case that the application which has one or more claims that are determined to be patentable/allowable is different from the PRH application(s) included in (i) to (iii) of 1. (a) (for example, the divisional application of the basic application), the application number, publication number, or a patent number of the application(s) which has claims determined to be patentable/allowable and the relationship between those applications also must be explained.
(b) Documents to be submitted
The applicant must list all required documents mentioned above 2. in an identifiable way, even when the applicant is exempted to submit certain documents.
(c) Claim correspondence
The applicant requesting PPH must indicate in section D of the “Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program” how all claims in the CNIPA application sufficiently correspond to the patentable/allowable claims in the PRH application.
When claims are just literal translations of each other, the applicant can just enter “they are the same” in the table. When claims are not just literal translations, it is necessary to explain the sufficient correspondence of each claim based on the criteria 1.(c) (Please refer to the sample form below).
(d) Notice
An applicant can file the “Request for Participation in the Patent Prosecution Highway Program” to the CNIPA through on-line procedures only.
4. Procedure for the accelerated examination under the PPH pilot program
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