Procedural Mechanism of Patent Prosecution Highway

In order to expedite examination of invention patent applications, Chinese government has implemented a Patent Prosecution Highway program way back in 2011. It is an agreement among the patent administrative authorities of 19 countries with China to accelerate patent prosecution procedures. Under this mechanism, once a patent office of the original application or of earlier examination decides to approve for patent, the corresponding application, upon request of the applicant, may be admitted into such accelerated examination mechanism in another participating patent office under certain conditions.

Basic idea of PPH

It is a way of simplifying Patent Prosecution and reducing the timeline for providing Patent rights and eliminating any waste of effort and time. An applicant can take advantage of a favorable prior opinion issued on the same claims filed with the USPTO by filing a PPH request prior to the commencement of substantive examination. If one foreign office believes that the claim has at least some merit, the Patent Prosecution Highway speeds the application along in other participating nations. Patent officers can work more quickly than usual because they’re able to use the same search and examination results that a foreign office used in its ruling. In other words, the Patent Prosecution Highway prevents multiple countries from duplicating the same work.

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.

U.S.-based inventors filed the greatest number of PCT patent applications in 2018, trailed closely by China, which is expected to surpass the U.S. within the next two years on current trends. China is the second largest source of PCT applications, overtaking Japan, with Chinese tech firms Huawei and ZTE, topping the PCT filing charts. China is the only country, among the top 15 PCT filing countries of 2017, to have consistently posted more than 10% growth in the number of PCT applications filed every year since 2003.

PPH offers a lot of benefits to patent applicants such as

  • Accelerated Examination
  • Enhanced Certainty
  • Reduced Prosecution Cost
  • Higher Granting Rates

The Chinese application is a divisional application of a CN patent application claiming the priority of the Japanese, US, German, Korean, Russian, Finnish, Danish, Austrian, Mexican, Polish, Canadian, Singaporean, Portuguese, Spanish, European, British, Icelandic, Swedish, or Israeli application.

Final Thoughts

The aim of the Patent Highways is to improve patent quality and reduce the examination workload through faster procedures. The key to getting your application accepted into the PPH is to make sure the claims in the China patent application corresponding to the allowed claims in the foreign case.

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