Monday, April 29, 2013

China’s Patent Prosecution Highway Program (PPH)

Monday, April 29, 2013
As of 1 March 1, 2013, nine Patent Offices have entered into agreements with the State of Intellectual Property Office (SIPO) of the People’s Republic of China for a Patent Prosecution Highway Pilot Program (“PPH”). These include the Japanese Patent Office (“JPO”), United States Patent and Trademark Office (“USPTO”), Korean Intellectual Property Office (“KIPO”), German Patent and Trade Mark Office (“DPMA”), Federal Service for Intellectual Property of the Russian Federation (“ROSPATENT”), National Board of Patents and Registration of Finland (“NBPR”), Denmark Patent and Trademark Office (“DKPTO”), Austrian Patent Office (“APO”) and Mexican Institute of Industrial Property (“IMPI”). 

The pilot periods of the PPH programs with these Patent Offices are scheduled to end either at the end of this year or early next year, but may be extended. 

Applicants can file a request under the SIPO-Office of First Filing (“OFF”) PPH agreement based on an OFF application, if the SIPO application is (a) a direct entry under the Paris Convention, or a PCT national phase application, and also (b) has at least one or more claims found to be allowable by the OFF. The SIPO application must have been published, the request for examination must have been made and the SIPO must not yet have begun examination at the time of the PPH request. 

The Applicants need to submit copies of all Office Actions issued by the OFF, a copy of the allowable claims, copies of all references cited by the OFF Examiner and a table of correspondence indicating how all the claims in the SIPO application correspond to the allowable claims in the OFF application. 

A first Office Action may be issued within three months after the PPH request is approved by the SIPO, whereas under the normal examination process the first Office Action will generally be received around one to two years after the examination procedure commences. It appears that using the PPH program has the potential to dramatically speed up the examination process for Chinese patent applications. However, the SIPO still carries out examination independently, so the grant of a patent by the OFF does not guarantee the grant of a patent in China.