As of December 1, 2011, the United States and China have
implemented a Patent Prosecution Highway (PPH) to expedite
examination of each others' patent applications. The PPH is
available for patent applications filed via the Patent Cooperation
Treaty (PCT) and via the Paris Convention.
In order for a Chinese patent application to qualify under the PPH,
the Chinese application must meet the following requirements:
- The Chinese application must claim priority to a U.S. application directly via the Paris Convention, indirectly via the PCT, or be a Chinese national phase entry of a PCT application where the United States was the International Search Authority;
- The U.S. application must include an indication of patentability of at least one claim in a Notice of Allowance or an Office Action, or the PCT application must indicate patentability in a PCT work product;
- All claims in the Chinese application must sufficiently correspond to the patentable claims in the U.S. or PCT application (i.e., the Chinese claims must be similar in scope or narrower than the U.S.-allowed claims);
- The Chinese application must be published;
- The Chinese application must have entered into substantive examination (i.e., received a notice of entering substantive examination); alternatively, a request to participate in the PPH can be made when filing a request for exam; and
- The China State Intellectual Property Office (SIPO) must not have issued any substantive examination office actions for the Chinese application.
Starting March 1, 2012, the Chinese patent application also must
have been filed electronically to participate in the PPH.
In addition to a Request to Participate in the PPH, the applicant
may also submit (a.) Chinese translations of all office actions
from the U.S. Patent and Trademark Office (USPTO) and (b.) Chinese
translations of all patentable claims as determined by the USPTO.
The applicant must submit (a.) Chinese translations of an
"Allowable Subject Matter" section of the relevant U.S.
office action, (b.) copies of any non-patent literature related to
any rejections or patentability (translations are not required),
and (c.) a claims correspondence table.
To participate in the PPH in the USPTO based on a Chinese
application, similar requirements must be met and similar documents
must be submitted with translations. However, publication and
substantive examination of the U.S. application are not
required.
The PPH is set to run through November 30, 2012 and will most
likely be extended based on experience with PPHs with other
countries. As the average pendency of a patent application in the
United States is 33.9 months from filing (as of October 2011,
according to the USPTO) and about two years from requesting exam in
China, the possibility of speeding up examination is welcome.
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.