Procedures to File a Request to the CNIPA under the PPH Pilot Program among the IP5

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 requirements under the IP5 PPH pilot program based on an EPO, JPO, KIPO or USPTO application. The pilot period of this IP5 PPH pilot program commenced on January 6, 2014, and will end on January 5, 2023 which may be extended then. Applicants can request accelerated examination by a prescribed procedure including submission of relevant documents on an application which is filed with the CNIPA under the IP5 PPH pilot program.

PPH using the national/regional work products from the EPO, JPO, KIPO or USPTO

1. Requirements

In order to be eligible to participate in the IP5 PPH pilot program at the CNIPA, the following requirements must be met:

(a) The CNIPA application for which participation in the IP5 PPH pilot program is requested must have the same earliest date whether this be the priority or filing date of a corresponding national/regional application(s) filed with another IP5 Office.

Fig 2 An application which is the basis of a valid priority claim under the Paris Convention for the corresponding application(s) filed with another IP5 Office (including PCT national phase application(s))

Fig 3 An application which shares a common priority document with the corresponding application(s) filed with another IP5 Office (including PCT national phase application(s))

Fig 4 A PCT national phase application where both the CNIPA application and the corresponding application(s) filed with another IP5 Office are derived from a common PCT international application having no priority claim

(b) At least one corresponding application exists in another IP5 office and the corresponding application(s) has/have at least one claim indicated by that IP5 office in its capacity as a national/regional office to be allowable/patentable.

(c) All claims in the CNIPA application (for which an accelerated examination under the IP5 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 corresponding application filed with another IP5 Office.

(d) The CNIPA application must have been published.

(e) The CNIPA application must have entered into the substantive examination stage.

(f) The CNIPA has not begun examination of the application at the time of request for the PPH.

(g) The CNIPA application must be electronic patent application.

Fig 5 Examples of which do not meet the requirements d-f and one exception

2. Documents to be submitted

(a) Copies of all office actions (which are relevant to substantive examination for patentability in another IP5 Office, including search report, search opinion) which were issued for the corresponding application by another IP5 Office, and translations of them.

(b) Copies of all claims determined to be patentable/allowable in the corresponding application by another IP5 Office, and translations of them.

(c) Copies of references cited by the examiner in another IP5 Office.

(d) Claim correspondence table, which indicates how all claims in the CNIPA application sufficiently correspond to the patentable/allowable claims in the corresponding application(s) filed with another IP5 Office.

 

PCT-PPH using the PCT international work products from the EPO, JPO, KIPO or USPTO

 

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 requirements under the IP5 PPH pilot program based on PCT international work products from the EPO, JPO, KIPO or USPTO (PCT-PPH pilot program).

1. Requirements

In order to be eligible to participate in the IP5 PPH pilot program at the CNIPA, the following requirements must be met:

(1) The latest work product in the international phase of a PCT application corresponding to the application (“international work product”), namely the Written Opinion of International Searching Authority (WO/ISA), the Written Opinion of International Preliminary Examining Authority (WO/IPEA) or the International Preliminary Examination Report (IPER), indicates at least one claim as patentable/allowable (The claim(s) determined as novel, inventive and industrially applicable by the ISA and/or IPEA has/have the meaning of patentable/allowable for the purposes of this document.).

(2) The relationship between the application and the corresponding international application satisfies one of the following requirements:

(A) The application is a national phase application of the corresponding international application.

Fig 6 Examples meeting the requirement A

(B) The application is a national application as a basis of the priority claim of the corresponding international application.

Fig 7 An example meeting the requirement B

(C) The application is a national phase application of an international application claiming priority from the corresponding international application. 

Fig 8 An example meeting the requirement C

(D) The application is a national application claiming foreign/domestic priority from the corresponding international application.

Fig 9 An example meeting the requirement D

(E) The application is the derivative application (divisional application and application claiming domestic priority etc.) of the application which satisfies one of the above requirements (A) – (D).

Fig 10 Examples meeting the requirement E

(3) All claims, as originally filed or as amended, for examination under the PCT-PPH must sufficiently correspond to one or more of those claims indicated to be patentable/allowable in the latest international work product of the corresponding international application by the EPO, JPO, KIPO, or USPTO as ISA/IPEA.

(4) The application must have been published.

(5) The application must have entered into substantive examination stage.

(6) The CNIPA has not begun examination of the application at the time of request for the PCT-PPH.

(7) The application must be electronic patent application.

2. Documents to be submitted

Documents (1) to (4) below must be submitted by attaching to “Request for Participation in the Patent Prosecution Highway Pilot Program”.

(1) A copy of the latest work product in the international phase of the corresponding PCT application, the WO/ISA or, where a demand under PCT Chapter II has been filed, the WO/IPEA or the IPER which indicated the claims to be patentable/allowable and their Chinese or English translations.

(2) A copy of a set of claims which the latest international work product of the corresponding international application indicated to be patentable/allowable and their Chinese or English translations.

(3) A copy of references cited in the latest international work product of the corresponding international application.

(4) A claims correspondence table which indicates how all claims in the application sufficiently correspond to the claims indicated to be patentable/allowable in the corresponding international application.