[Author: Eric (Zhiguang) Geng]

PPH, literally the Patent Prosecution Highway, is a procedure to facilitate the prosecutions in a national phase. More particularly, if an application has all or part of its claims allowed in one country, more precisely we call it office of first filing, then for a family application in another country, which we call it office of second filing, the prosecutions can be accelerated, based on the allowed claims from the office of first filing. Or for short, by PPH the applicant may use the allowance from one country as the basis for accelerating the prosecutions in another country.

In China’ IP practice a request for PPH would make a significant acceleration on the issue of the first office action. According to the CNIPA’s official information, the expected waiting time for the first office action can be reduced by a request for PPH from more than 12 months to about 2 months.

Technically a request for PPH only accelerates the issue of the first office action; it neither accelerates any further office action nor guarantees any positive result of the prosecution. However, in practice we have noticed both the total length and the total number of office actions during the prosecution may be reduced by a request for PPH.

So it can be seen that, in China’ IP practice the application may benefit a lot from a request for PPH in terms of shortening and simplifying the prosecution. Now allowances from more than 30 countries or regions are admitted by the CNIPA as a proper basis for requesting a PPH, including the IP 5; in addition, of course the PCT-PPH is available in China, which means that a PPH request can be made based on the written opinions from the international phase. We believe this is sufficient for most applicants seeking for a patent protection in China; and we do recommend our audients to make wise use of it for your Chinese applications, especially if you find the allowed claims in other counterpart applications give a satisfying protections scope.

And here are some tips about filing a request for PPH in China.

Firstly, the timing: A request for PPH can be filed with the CNIPA after the application is published, after or at the same time of a request for substantive examination, and before the examiner has made any examination on the application. In practice we cannot get to know when the examiner actually finish his examination; so the request for PPH could be filed as long as we have not yet receive the notification of the first office action. Considering that in the normal procedure we are not likely to receive the first office action very soon, the applicant usually has plenty of time to wait for a potential allowance of a counterpart application. Actually in practice, to facilitate a successful PPH request, we usually suggest the applicant to wait for the published patent of the counterpart application before filing the request for PPH.

By the way, you may have noticed that, the request for PPH should be filed after a request for substantive examination. This means the PPH system is only available for invention applications in China.

Secondly, what documents we should prepare for filing a request for PPH? The CNIPA has a properly drafted “request form” for download on their website, clearly indicating the required documents to be filed for the PPH request, including the working result of an Office of Earlier Examination, the allowed claims, and the cited references. In fact in many cases the applicant does not really have to prepare and file the listed documents together with the request form. For example if the working result and the allowed claims are from an US counterpart application, neither the working result, a notice of allowance for example, nor the allowed claims, or any translation of them, needs to be provided by the applicant. They could be retrieved at the examiner’ end from an international database, like the “patent scope”, and what we need to do is just ticking in the corresponding boxes in the request form. And similarly, though all the references cited by the Office of Earlier Examination are required, only the non-patent ones need to be provided to the CNIPA.

Generally speaking, if a PPH request in China is based on allowed claims from another major patent office, like the IP5, the burden for the applicant on providing the required documents will be quite limited.

However, in China’s practice the requirement on the correspondences between the allowed claims and the Chinese claims for examination is relatively strict. Technically the Chinese claims for examination need to satisfy one of the three conditions: being exactly the same as the allowed claims; only differing from the allowed claims in the dependencies; or compared with the allowed claims, the Chinese claims have further restrictions from the original specification. Usually this requests initiative amendments on the Chinese claims. Although we mentioned three options as above to make the Chinese claims suitable for PPH, in order to save the time and facilitate a successful PPH request, we do suggest the applicant to have the Chinese claims amended exactly the same as the foreign allowed claims at first, even though this might cause some formality issues in China, which we believe would be easy to overcome at later stages.

The above is a brief introduction on the PPH system in Chinese practice. Hope this will be helpful for your Chinese application.