Among regular PPH requests submitted, regular PPH requests proposed on the basis of working results of European Patent Office (EPO) or United States Patent and Trademark Office (USPTO) occupy a considerable large proportion. The working results based on EPO or USPTO are generally provided in English, and in IP5’s PPH request process, the requirements for submission of documents related to a PPH request are relatively loose, that is, as long as related documents can be obtained by a file access system of EPO or USPTO, the documents may not be submitted during submission of the PPH request. However, it is required that names of all communications from the Examining Division (hereinafter "official documents" for short) related to substantive examination regarding patentability made by EPO or USPTO must be listed in "Request for participation in the Patent Prosecution Highway Program (hereinafter "Request Form" for short)". Such requirement renders that many regular PPH requests are rejected due to omission or mistranslation of names of official documents, thereby causing loss of opportunity of the applicant to accelerate the examination.

In this article, regarding regular PPH requests based on working results of EPO or USPTO, the types of official documents which need to be filled in are summarized, so as to help patent agents to avoid the occurrence of PPH requests being rejected due to omission or mistranslation of names of official documents.

1. Types and filling-in of EPO official documents

In Europe, for a new application, a search request must be proposed during filing, and prior to substantive examination, the EPO will make a search report for the application and provide search opinions indicating patentibility of the application.

Therefore, although search reports and search opinions made by the EPO are made before substantive examination stage, as the search reports and search opinions are relevant to the patentability of the application, they also need to be filled in the Request Form when filling in names of official documents.

In particular, official documents made by the EPO have the following several types:

(1) search report

(2) search opinion

(3) communication from the Examining Division

(4) Annex to the communication

(5) Communication under Rule 71(3) EPC

(6) Decision to grant a European patent pursuant to Article 97 (1)EPC.

Herein, it should be noted that (3) "communication from the Examining Division" and (4) "Annex to the communication" may appear multiple times in the examination process, and the names of all (3) and (4) need to be listed in the Request Form. The Decision to grant a European patent is only an announcement document, and its name may not be listed in the Request Form.

2. Types and filling-in of USPTO official documents

Unlike a Chinese patent, for a US patent, an authorized patent may be modified after being granted a patent right, and the number of modifications is not limited; therefore, for a US authorized patent, one or more Notices of Allowance and Fees Due may usually be found.

Therefore, for an authorized patent having multiple Notices of Allowance and Fees Due, there are generally notifications associated with Response to Amendment and/or Correction between those Notices of Allowance and Fees Due, and these notifications also need to be listed in the Request Form.

In particular, official documents made by the USPTO have the following several types:

(1) Non-Final Rejection

(2) Final rejection

(3) Notice of Allowance and Fees Due

(4) Response to Amendment under Rule 312

(5) Certificate of Correction

Herein, it should be noted that (1)-(4) may appear multiple times in the examination process, and the names of all (1)-(4) need to be listed in the Request Form.

All official documents that may appear in substantive examination process of EPO and USPTO are basically listed above; however, these official documents do not necessarily appear in examination processes of EPO and USPTO. For example, whether EPO or USPTO, it is possible to directly authorize a patent application, and thus there are no "communication from the Examining Division" and "Annex to the communication" in the substantive examination process of EPO; likewise, there are no "Non-Final Rejection" and "Final rejection" during the substantive examination process of USPTO.

When filling in a Request Form, it is necessary to carefully check all official documents. In particular, when there are multiple Notices of Allowance and Fees Due during the substantive examination process of USPTO, it is necessary to verify whether there are "Response to Amendment under Rule 312" and/or "Certificate of Correction" so as to avoid filling-in omission of official documents in the Request Form.

In addition, the names of most official document in substantive examination processes of EPO and USPTO have standard Chinese translations in the IP5’s PPH request process, and during filling in the Request Form, the official names need to be filled in according to the standard Chinese translations. For official documents that do not have standard translations in the IP5’s PPH request process, such as "Response to Amendment under Rule 312" and "Certificate of Correction", the English names thereof can be literally translated, and the corresponding English names are marked following the literally-translated Chinese names, for reference by the examiner, thereby avoiding the rejection of PPH request caused by mistranslation of names of official documents.

The content above is a brief summary of the filling-in of official documents when submitting a regular PPH on the basis of EPO or USPTO examination results. We hope that the summary above can be of use for colleagues when dealing with PPH requests.