Accordingly to statistics collected by the Japanese Patent Office (JPO), participating in the Patent Prosecution Highway (PPH) in China will significantly speed up examination and grant of a patent application. Per the JPO data, from January to June 2021, the China National Intellectual Property Administration (CNIPA) on average issued a first office action within 2.2 months of granting a PPH request. This is close to a third of the time it takes the USPTO to issue a first office action from time of grant of a PPH request at 5.6 months per the JPO data.
The average pendency from PPH request to grant in China was 11 months versus 16.5 for the U.S. The average number of Office Actions was 1 in China versus 2.92 for the U.S.
In terms of which is office of earlier examination for PPH requests in China, in 2020, the USPTO was the leader with 2459 requests, JPO with 1813, EPO with 1069, and 269 from KIPO. In terms of PPH requests from CNIPA, the U.S. also remained the leader with 982 requests in 2020, with the JPO, KIPO and EPO following up with 146, 141 and 132 requests respectively.
In order to file a request to participate in PPH in China, an applicant must file the request after the publication of the Chinese invention application but before receiving an Office Action. Further, the PPH request should be filed when filing a request for the exam, or after the Chinese application has entered into a substantive examination (i.e., received a notice of entering a substantive examination).
All claims in the Chinese application must sufficiently correspond to the patentable claims in the foreign or the Patent Cooperation Treaty application (i.e., the Chinese claims must be similar in the scope or narrower than the allowed claims). The base application being relied on for the Chinese PCT request must include an indication of the 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.
In addition to a request to participate in the PPH, an applicant must submit (1) Chinese translations of the allowable claims of the relevant base application, (2) list of references cited by the examiner, (3) copies of non-patent literature references cited by the examiner, if any (4) a claims correspondence table with explanation; and (5) copies of all office actions that are relevant to substantive examination for patentability. The applicant also should submit Chinese translations of all office actions if the documents are not in English.
© 2021 Schwegman, Lundberg & Woessner, P.A. All Rights Reserved.National Law Review, Volume XI, Number 317