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For those with time-sensitive patents to protect, there are two options for speeding up the process in China. Jinghuan Jia, Lei Su and Frank Jeng of Purplevine explore the details.
China has been proactively strengthening intellectual property awareness within the country. To align with the Central Government’s initiative, China National Intellectual Property Administration (CNIPA) has found ways to expedite examination procedures to catch up with the ever-changing technology developments.
Currently, there are two types of expedited examination procedures available in China:
- Prioritised examination;
- Patent Prosecution Highway (PPH).
We will provide a comprehensive introduction to the two procedures and how foreign entities can utilise them to protect their patents.
1) Prioritised examination procedure
Applicants often use prioritised examination to expedite the examination in high-tech fields, such as energy conservation, environmental protection, new materials, or new energy vehicles. It can be found under the “Administrative Regulations of Prioritised Patent Examination” (Regulations) which came into effect on August 1, 2017.
Prioritised patent examination is an effective way to shorten the examination cycle, which benefits patent applicants. It is also called a “green path”.
The prioritised examination procedure applies to all three patent applications: invention, utility model, and design patent applications filed with the CNIPA.
Apart from patent applications under substantive Examination, applicants can also submit a request for prioritised examination during invalidation or reexamination procedures.
(b) Specific requirements
Under the Regulation, Chinese patent applications which fall within the below scope are qualified to request prioritised examinations:
- content of the application involves the technology areas that concern the nation, including but not limited to energy conservation and environment protection, the new generation of information technology, biotech, high-end equipment manufacturing, new energy, new materials, new energy vehicles, intelligent manufacturing;
- it involves industries that are encouraged by the provincial governments and prefecture-level city governments;
iii. it involves the technologies relating to the internet, big data, and cloud computing which is evolving rapidly;
- the patent applicant or the applicant requesting reexamination gets everything ready to implement or has already started to implement, or has shown that a third party is implementing its invention-creation;
- it should be first filed in China. Patent applicant should claim China as the priority in their filing when they file the same subject matter in another country/region; or
- other situations that have significant interests for China and the public and therefore need to be examined as a priority.
(c) Can foreign applicants apply for the prioritised patent examination?
If the foreign applicants have a Chinese subsidiary company, they may try to apply for the prioritised examination procedure via their Chinese subsidiary company.
(d) Timelines for prioritised examination
Upon approval of the request for prioritised examination, the time limit for responding is significantly shortened. Bearing the critical timelines in mind may help foreign applicants to utilise the system better and monitor their progress. We have listed essential timelines in the table below for your reference (only for a patent application for an invention).
”We have seen a lot of requests rejected in China due to the failure to meet the formality requirements.”
(e) Cost for prioritised examination procedure
There is no official fee for applying for prioritised examination.
1) Patent Prosecution Highway (PPH)
PPH is a framework for applicants whose claims have been determined to be patentable in the Office of First Filing (OFF). The patentable claims are eligible to go through an accelerated examination in the Office of Second Filing (OSF) with a simple procedure upon an applicant’s request.
(a) Types of patent applications
Only invention patent applications are eligible for PPH.
(b) Origin of applications
China has signed PPH bilateral or multilateral agreements with more than 30 countries or organisations (such as Japan, Republic of Korea, Singapore, Israel, Germany, Russia, Denmark, Finland, Austria, Poland, Spain, Portugal, UK, Iceland, Sweden, Hungary, US, Mexico, Argentina, Malaysia, Czech Republic, Canada, Brazil, Egypt, Chile and Norway). If the country or organisation of origin of a patent application is any of the above-mentioned countries or organisations, a request for PPH may be made to accelerate its examination process.
(c) Proper timing
When filing a request for PPH, the invention patent application must have been published and entered into the substantive examination stage but the CNIPA has not issued the first Office Action to the applicant.
(d) Filing system
In a request for PPH, the patent application must be an electronic application which has been filed online through the Patent Electronic System provided by CNIPA or has been converted into an electronic application by the same system.
(e) Special requirements
When an applicant files a request for PPH, the application must satisfy the following special requirements: correspondence of patent application; correspondence of claims; and patentability. These requirements are listed on WIPO’s website. You may read more here.
No official fee.
(g) Advantages and disadvantages
PPH will allow patent applicants to request accelerated examination at any of the IP offices involved in PPH if their claims have been found to be acceptable by any of the other IP offices involved in the PPH.
However, formality requirements for requesting PPH are strict in China. We have seen a lot of requests rejected in China due to the failure to meet the formality requirements, while applicants are entitled to only two chances to file the request for PPH. More importantly, it is impossible to broaden the scope of the claims with the CNIPA from that in the OFFS. There is a higher risk in amending the scope of the claims beyond the scope of the disclosure contained in the initial descriptions and claims. We strongly recommend applicants NOT to make any amendments. Although there are two opportunities to make a PPH request in China, applicants should strictly follow the CNIPA’s requirements.
Comparison between prioritised examination and PPH
Purplevine has extensive experience in the above procedures for many patent applications that apply to the expedited examination procedure. If you have any questions, please feel free to reach out to the Purplevine team.
Jinghuan Jia is a qualified PRC patent attorney and senior patent manager at Purplevine. She can be contacted at: Jinghuan.email@example.com
Lei Su is a project director at Purplevine. She can be contacted at: Lei.firstname.lastname@example.org
Frank Jeng is chief international business development and marketing officer at Purplevine. He can be contacted at: Frank.email@example.com
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