Recently, more and more applicants are using the PPH program in China in the hope of getting their patent applications granted more quickly. However, as the Chinese examiner for the PPH Request is very strict on the formality examination and the applicant only has two chances to file the PPH Request, if there are any formality defects, the PPH Request will fail to pass through the formality examination. Therefore, some tips are provided as follows for the applicant's, other patent attorneys', or patent paralegals' reference.
If an applicant wants to file a PPH request to accelerate the substantive examination of a Chinese application, the following information shall be checked firstly:
1. Whether there is a corresponding application which is the counterpart application of the Chinese application
2. Whether the claim(s) of the corresponding application has/have been granted or is/are to be granted
3. Whether there is a PPH program between the CNIPA and the examination Office which examines the corresponding application
4. Whether the timing for filing a PPH request is proper
In China, a PPH request may be filed when filing a substantive examination request for the Chinese application under a precondition that the Chinese application has been published, or when a notification of entering into the substantive examination stage has been received from the CNIPA but no office action has been received from the substantive examination department.
If any one of the answers above is negative, the PPH request will not be allowable in China.
Otherwise, in the case where all of the answers above are positive, the following information shall be checked secondly:
5. Whether the claim(s) of the Chinese application sufficiently correspond(s) to the claim(s) of the corresponding application
"Sufficiently correspond" means that the claims of the Chinese application are the same as those of the corresponding application or the scopes of the claims of the Chinese application are narrower than those of the claims of the corresponding application.
In China, the claims of the Chinese application being the same as those of the corresponding application will greatly improve the success rate of the PPH request.
In the case where the claims of the Chinese application do not sufficiently correspond to the claims of the corresponding application, the following information shall be checked thirdly:
6. Whether there is a chance to voluntarily amend the claim(s) of the Chinese application to be the same as that/those of the corresponding application
In China, the applicant may make voluntary amendments to the Chinese application when filing a request for substantive examination of the Chinese application or within three months after receiving the notification of entering into the substantive examination stage.
If there is no chance to make a voluntary amendment to the claims of the Chinese application while the claims of the Chinese application do not sufficiently correspond to the claims of the corresponding application, the probability of success of the PPH request will generally be very low.
In the case where the claims of the Chinese application sufficiently correspond to those of the corresponding application, the following information shall be checked:
7. Whether all of the Office Actions relating to the substantive examination of the corresponding application and the granted claim(s) of the corresponding application together with their English or Chinese translations are available
For some PPH programs, for example, the IP5 PPH program, in the case where all of the Office Actions relating to the substantive examination of the corresponding application and the granted claims of the corresponding application, together with their English or Chinese translations, are available via the Dossier Access System of the examination Office which makes the substantive examination on the corresponding application, there is no need to file them before the CNIPA when filing a PPH request.
For most of the PPH programs, all Office Actions relating to the substantive examination of the corresponding application and the granted claims of the corresponding application together with their English or Chinese translations should be filed when filing a PPH request.
After having checked the information above, and the answers are positive, a PPH request may be filed based on the corresponding application and the probability of success of the PPH request will be high.
The information above is written on the basis of our experience with handling the PPH program, and the author wishes to help applicants, patent paralegals, etc.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
