Foreign investors can register IP in China for trademarks, patents, designs, and copyright. However, each of these is administered by a different government body. The primary law in China pertains to copyright. This protects copyrighted works of foreigners that are either first published in China or in countries that are signatories to the World Intellectual Property Organization (WIPO) copyright protection treaty. The patent office that made the preliminary examination conclusion shall have a PPH agreement with SIPO, which is to say that an applicant could only file a PPH request based on the above bi-lateral or multi-lateral agreement.
Patent Prosecution Highway
The PPH allows for expedited examination of a Chinese application when a corresponding application in a participating patent office has at least one allowable/patentable claim. China has several signed agreements with various patent offices and one needs not to be a resident of the country of the corresponding patent office. For example, an American applicant with an allowed Norwegian patent application can request to participate in the PPH in China based on the Norwegian patent application.
The Filing Process of PPH–
China currently has 20 PPH programs with almost all the major patent offices in the world, including the most often used IP5 PPH program among China, the United States, Europe, Japan, and Korea. It also accepts a PPH request based on the positive Written Opinion or International Preliminary Examination Report made by an International Search Authority or Preliminary Examination Authority. 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.
PPH offers a lot of benefits to patent applicants such as–
- Accelerated Examination
- Enhanced Certainty
- Reduced Prosecution Cost
- Higher Granting Rates
The PPH will potentially reduce costs by minimizing applicants’ attorneys’ fees by reducing the number of office actions and the associated cost to translate and respond to the same. Moreover, speaking of the overall benefit to society, PPH provides an opportunity for participating offices to mutually leverage the examining and searching resources of each other, increase efficiency, reduce repetitive works, improve the patent quality, and realize the effective and sufficient utilization of global examination resources.