When a patent application which has been filed in China under the PCT or Paris Convention (hereinafter referred to as a patent application) is to be expedited, you may consider choosing the Patent Prosecution Highway (PPH) or Prioritized Examination of Patent Applications, but which is better for your application?

     1. What is PPH and Prioritized Examination?

    PPH is a framework in which an application whose claims have been determined to be patentable in the Office of First Filing (OFF) is eligible to go through an accelerated examination in the Office of Second Filing (OSF) with a simple procedure upon an applicant’s request[i].

    Prioritized Examination is a procedure for expedited review of a patent application in some high-tech fields like energy conservation, environmental protection, new materials or new energy vehicles.

    2. Comparison of PPH and Prioritized Examination

    Right now, the CNIPA offers two programs for expediting examination of patent applications: PPH and Prioritized Examination. Which one is best for you? To answer that question, we hereby introduce points that we think you should be aware of.

     (1) Types of Patent Applications

    There are three types of patent in China: invention patent, utility model patent and design patent. For all three types of patent, a request for Prioritized Examination can be filed to the CNIPA, however, only invention patents are eligible for PPH.

    Further, a request for Prioritized Examination can be made for invalidations of patent applications and reexaminations of patent applications, in addition to invention patent applications under substantive examination.

    (2) Origin of Applications

    China has signed PPH bilateral or multilateral agreements with more than 20 countries or organizations (such as Japan, South 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 organization of origin of a patent application is any of the above-mentioned countries or organizations, a request for PPH may be made to accelerate its examination process. However, a request for Prioritized Examination has no such restrictions.

     (3) Proper Timing

   When filing a request for PPH, the invention patent application must have been published and entered into the substantive examination stage, and the CNIPA must not have issued the first Office Action of the application.

    When filing a request for Prioritized Examination for an invention patent application, the examination fee should have been paid and the invention patent applications should be under substantive examination. In practice, usually the suitable time to make a request for Prioritized Examination is after receiving a Notification of Entering the Substantive Examination. For utility models and designs, when filing a request for Prioritized Examination, the filing fee should have been paid to the CNIPA.

    As an exception, it should be noted that a request for PPH or for Prioritized Examination can be made at the same time when filing a request for substantive examination.

    (4) Filing System

    Whether it is a request for PPH or a request for Prioritized Examination, 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.

    (5) 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 described on WIPO’s website and not explained here.

    When an applicant files a request for Prioritized Examination, the application must satisfy one of the following requirements as prescribed in Article 3 of the Administrative Measures for Prioritized Examination of Patent: 1) .relating to energy conservation, environmental protection, new-generation information technology, biology, high-end equipment manufacturing, new energy, new materials, new energy vehicles, intelligent manufacturing and other key national industries; 2) .relating to the key industries encouraged and supported by the governments at provincial level and municipal level; 3) .relating to internet, big data, and cloud computing, in which field technology and products follow a rapid update rate; 4) .cases which are ready for implementation or have already been implemented by the patent applicants or reexamination petitioners, or those with evidence proving that others are implementing the invention; 5) .cases where the application is first filed in China and then filed in other countries or regions with the same subject matters; 6) .other matters that are of great significance to national interests or public interests and require Prioritized Examination.

    (6) Documents to be Submitted

    When filing a request for PPH, an applicant must submit the following documents: 1) a request form “Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program”; 2) copies and translations of all allowable claims ; 3) copies and translations of all examination opinion notices; and 4) all of the Non-patent literatures related to the reasons for rejection.

    Documents that we need for requesting Prioritized Examination are: 1) a request form for requesting Prioritized Examination; 2) information of prior art or prior design; and 3) the relevant supporting documents.

    In addition to the above documents, in practice, the following documents also need to be submitted: 1) Power of Attorney for requesting Prioritized Examination; 2) Applicant's identity certificate; If the applicant is an individual, a copy of their ID card or passport should be provided. If the applicant is an enterprise, a copy of the enterprise's business license should be provided. If the copy of the enterprise's business license is in a foreign language, a Chinese translation thereof is also required; 3) a copy of Notification of Entering the Substantive Examination and a copy of a payment receipt of a request for substantive examination (for invention application); and 4) a statement of the supporting documents.

    In addition, the documents for PPH should be submitted to the CNIPA and the documents for Prioritized Examination should be submitted to a local intellectual property bureau.

    (7) Fees

    Whether filing a request for PPH or filing a request for Prioritized Examination, there is only a small service fee and no official fee.

     3. Advantages and Disadvantages

    PPH will allow patent applicants to request accelerated examination at any of the offices involved in the pilot if their claims have been found to be acceptable by any of the other offices involved in the pilot.[ii]

    However, formal requirements for requesting PPH are strict in China. A lot of such rejected requests are caused by failing to meet the formal requirements, while applicants are entitled to only two chances to file the request for PPH. More importantly, it is impossible to make the claims in the CNIPA wider in scope than the claims in the OFFS and the risk of amendments going beyond the scope of the disclosure contained in the initial descriptions and claims is relatively high.

    The advantages of filing a request for Prioritized Examination are very obvious. Prioritized Examination appears to be significantly faster on average than the PPH request for expediting examination. For an invention patent application, the first Office Action will be issued within 45 days, and the examination will be finished within a year; and for a utility model and design application, the case will be closed within 2 months. However, the number of requests for Prioritized Examination that may be accepted in a fiscal year is limited.

     4. Conclusion

    In summary, the procedure for applications will be significantly expedited by utilizing PPH and Prioritized Examination. Surprisingly, prosecuting a request for Prioritized Examination or a request for PPH may cost little. Why not do it now if you need to accelerate the process?

    [i] https://www.wipo.int/edocs/mdocs/aspac/en/wipo_reg_pct_tyo_13/wipo_reg_pct_tyo_13_t11.pdf

    [ii] https://www.jpo.go.jp/e/toppage/pph-portal/globalpph.html