The PPH (Patent Prosecution Highway) is an international procedural scheme existing in the form of a bilateral agreement or a multilateral agreement for accelerating patent examination between participating countries. When at least one or more claims in a patent application submitted to the Office of First Filing (OFF) are determined to be patentable, the applicant can submit a request for accelerated examination of a subsequent application to the Office of Second Filing (OSF).
According to the basic framework, the PPH can be classified into two types: the regular-type PPH and the PCT-PPH. Under the regular-type PPH, a patent office of a certain country or region is taken as an Office of First Filing, and a request for accelerated examination is submitted to an Office of Second Filing on the basis of an opinion indicating patentability from the Office of First Filing. Under PCT-PPH, an applicant of a PCT application receives a positive Written Opinion or Preliminary Examination Report in which the patentability of at least one claim of the PCT application is indicated, the applicant files a request for accelerated examination of an application filed in the national phase of a certain country or region.
By means of a request for accelerated examination, an applicant can benefit from a highly accelerated examination speed (for example, accelerated issuing of Notification of the First Office Action), improved predictability, saved application fees, etc.
China-Finland PPH via Paris Convention
The regular-type PPH can be classified into the PPH via Paris Convention and the PPH via PCT according to the Office of First Filing. Under the PPH via Paris Convention, an application is filed to an Office of Second Filing under Paris Convention within 12 month since the priority date of the OEE application, and a request for accelerated examination of the subsequent application is submitted in the case of meeting the conditions.
Some issues will be faced in a PPH operation procedure due to a strict PPH examination process in China. Especially an agent who just starts to handle the PPH or file the PPH in a rare circumstance (for example, China-Finland PPH) will meet many unpredictable difficulties. In the following, for the China-Finland PPH via Paris Convention, the authors specifically explain, on the basis of personal practice, some key points and situations to which attention should be paid.
Examination language of a Finnish OEE application
In the examination system in Finland, the applicant can file a patent application document in English or Finnish, and the examination language of a Finnish OEE application can be English or Finnish. That is to say, in an examination process of a Finnish OEE application, a work product issued by the Finnish Patent and Registration Office (PRH) can be in English or in Finnish.
Documents required to be submitted
-a request form for participating the PPH Pilot Program;
-a copy and its translation of office actions issued by The National Board of Patents and Registration (NBPR) of Finland;
-a copy and its translation of patent claims that are determined to be patentable by the NBPR;
-a copy of cited documents in OEE work products
Notice in a document preparation process
-As the earlier application is a Finnish application, the Office of Earlier Examination on the request form for participating the PPH should be the National Board of Patents and Registration (NBPR) of Finland.
-Under the regular-type China-Finland PPH, OEE work products and all claims that are determined to be patentable by the OEE cannot be omitted, and thus a copy and its translation of OEE work products and a copy and its translation of OEE claims are the documents that must be submitted.
-If the examination language of an OEE application is English, only a copy of OEE work products and a copy of OEE claims shall be submitted, and the translation of the two does not need to be submitted.
-If the examination language of an OEE application is Finland, other than a copy of OEE work products and a copy of OEE claims, translation of the two should also be submitted; the copy of OEE work products and the copy of OEE claims are in Finland, and the translation of the two can be in Chinese or English.
-If only patent documents are cited in OEE work products, a copy of documents cited in OEE work products does not need to be submitted; if non-patent documents are cited, the non-patent documents shall be submitted (their translation does not need to be submitted).
-The following titles of a copy of OEE work products shall be listed in the request form: office action (välipäätös), COMMUNICATION OF ACCEPTANCE under section 29a of Patents Decree (Hyväksyvä välipäätös - PatA 29 a §:n mukaan), NOTIFICATION UNDER SECTION 19 OF PATENTS ACT - application can be accepted (Ilmoitus PatL 19 §:n mukaan - hakemus voidaan hyväksyä), DECISION - application accepted (patentti myönnetty).
- A copy of OEE work products can be found by logging in the Finnish Patent and Registration Office, and an entry for logging can be entered by inputting a publication number of an OEE application in a search entry of the European Patent Office and clicking the option of “FI Register”.
Regular-type PPH program between China and non-IP5 countries
When a regular-type PPH program between China and non-IP5 countries (Paris Convention route) is submitted, the described practical operations can be used for reference. A regular-type PPH program between China and non-IP5 countries is similar to China-Finland PPH and attention needs to be paid to the described issues. It is emphasized to pay attention to the language of an OEE application, as this determines a copy of work products in which language shall be submitted and whether translation thereof shall be submitted; when titles of a copy of OEE work products are listed in a request form, attention should be paid to whether all OEE work products are listed, and in the regard, reference can be made to a list in a notification published by a patent office of a non-IP5 country to carefully search for work products.
The above are only some superficial understandings of the authors in the practice of patent agency, aiming for providing specific thinking and feelings about submitting China-Finland PPH request via Paris Convention. If there is anything wrong, we would also like to ask all experts and colleagues for your advice, and we would like to express my sincere gratitude again.