Under the current patent examination system in China, the examination procedure of a utility model patent application is shorter, which generally takes six months to one year to be granted, while as to an invention patent application, the examination procedure is much longer, which generally takes at least 2-3 years to be granted due to the substantial examination. However, the applicant usually hopes a patent application to be granted as soon as possible. Therefore, how to speed up the examination procedure of a patent application, especially the examination procedure of an invention patent application, by legal means, has attracted more and more attention. Hence, let’s overview some approaches that are often used in the patent practice in China to speed up the examination procedure of a patent application.

    I. Patent Prosecution Highway

    Basic concept and classification

    Patent examination highway (hereinafter simply referred to as PPH) refers to a situation that if one or more claims comprised in a patent application submitted by the applicant to the Office of First Filling (hereinafter referred to as OFF) is determined to be patentable by the OFF, a request for accelerating the examination of a subsequent application with corresponding claim(s) may be submitted to the Office of Second Filling (hereinafter referred to as OSF).

    PPH can be divided into two types: conventional PPH and PCT-PPH, and conventional PPH can further be divided into two types: conventional PPH in Paris Convention way and conventional PPH in PCT way.

    Conventional PPH in Paris Convention way refers to within the priority period of the OFF application, when a subsequent application is filed to the OSF in Paris Convention way, a request for accelerating the examination of the OSF application may be submitted under certain conditions. Conventional PPH in PCT way refers to both the OFF application and the OSF application are submitted in the way that a PCT application enters the national phase, a request for accelerating the examination of the OSF application may be submitted under certain conditions.

    PCT-PPH refers to when a positive written opinion or international preliminary examination report is received by the applicant of a PCT application from a specific International Searching Authority or International Preliminary Examining Authority, stating that at least one claim of the PCT application is patentable, a request for accelerating the examination of the PCT application may be submitted within a relevant national or regional phase.

    Timing of submission

    The patent application must have been published; the PPH request may be submitted at the same time as a request for substantial examination of the patent application is submitted or when the patent application has entered into the procedure of substantial examination, but a notification of the Office Action has not yet been issued.

    Notice

    1. PPH is not a mechanism for countries to mutually recognize the examination results of the substantial examination, so it is still necessary to conduct a substantial examination of a patent application or perform other examination procedures in accordance with the Chinese patent law even after the PPH request is accepted.  That is, a PPH request may be a preferable way for the application to be quickly assigned to an examiner for examination, however, once the application is on examination, it goes through a normal examination procedure.  The examiner will make reference to the examination result of the application on which the PPH request is based, but the examination in China is actually independent from that result.

    2. When submitting a PPH request, the applicant usually needs to amend the claims of the OSF application to be completely consistent with the claims of the OFF application which are determined to be patentable, and the OSF application may be amended by means of the chance of an voluntary amendment.  With regards to this, it is advised that such a PPH request is prepared based on the granted and issued patent of the OFF application so as to make the claims are exactly consistent.

    3. According to the current PPH procedures in China, the applicant can only submit a PPH request twice for one patent application. In other words, if a first request is rejected due to some formality objection or substantial rejection, the applicant can only re-file the request but once. Therefore, in practice, it is strongly suggested that the applicant should take great care of the preparation for the documents of a PPH request for a patent application and make sure that all the requirements are satisfied.

    II. Priority Patent Examination

    Suitable fields or scenarios

    1. The national key development industries, such as energy conservation and environmental protection, new generation information technology, biology, high-end equipment manufacturing, new energy, new materials, new energy vehicles, and smart manufacturing;

    2. The industries that are mainly encouraged by the provincial and districted municipal governments;

    3. The Internet, big data, cloud computing and other fields, and the technology or product updates quickly;

    4. The patent applicant or reexamination requester is ready to implement or has begun to implement the invention, or there is evidence to prove that others are implementing the invention;

    5. The first patent application in China which was firstly submitted in China and then submitted in another country or region for the same subject matter;

    6. Others of great significance to the national interest or public interest.

    Documents to be submitted

    A request for Priority patent examination, the prior art or prior design information materials, self-certified materials deemed necessary by the requester, the recommendations for priority patent examination signed by the relevant department of the State Council or the provincial intellectual property office .

    Notice

    1. The patent application requesting a priority patent examination shall be an electronic application, and if the patent application is a paper application, the paper application should be converted into an electronic application.

    2. The invention patent application has entered into the procedure of substantial examination.

    3. The priority patent examination for a patent application shall be approved by all applicants.

    III. Patent pre-examination

    Application process

    1. Enterprises and public institutions that meet the corresponding industry and regional regulations can submit a request for pre-examination of a patent application to the local intellectual property protection center;

    2. The local intellectual property protection center conducts research and preliminary examination of the patent application, and issues a pre-examination report. The applicant can amend the application documents based on the official comments of the patent pre-examination and make a response to the comments;

    3. After patent pre-examination by the local Intellectual Property Protection Center is passed, the applicant shall submit the application documents consistent with the documents that have passed patent pre-examination to the Patent Office, and after being approved by the Intellectual Property Protection Center, the examination procedure of the patent application will be accelerated.

    Notice

    1. A request for patent pre-examination can be submitted for direct or conventional invention patent applications, utility model patent applications, or design patent applications, however a request for patent pre-examination shall not be submitted for PCT international applications or PCT international applications that have entered the Chinese national phase, invention and utility model applications filed on the same day, divisional applications and  applications for confidentiality examination cannot request patent pre-examination.

    2. For invention patent applications, the applicant shall submit a response to the notification of the First Office Action within 10 working days from the date of issuance, and the applicant shall submit a response to the notification of the Second Office Action within 5 working days from the date of issuance; and for utility model patent applications, the applicant shall submit a response to the notification of the Office Action within 5 working days from the date of issuance.

    IV. Patent publication in advance

    Basic concept

    Patent publication in advance refers to the applicant may request for the publication of his patent application in advance from the filing date by submitting a statement for the same. Patent publication in advance is only applicable to invention patent applications, and the applications will be published immediately after the statement for patent publication in advance is approved by the Patent Office.

    Advantages and disadvantages

    Advantages

    1. The request for patent publication in advance of a patent application can speed up the examination procedure of the patent application and shorten the time from filing a patent application to authorization of a patent.

    2. According to the Chinese Patent Law, after an invention patent application is published, the applicant can require the entity or individual implementing the invention to pay an appropriate fee, that is, to obtain the so-called "temporary protection".

    3. The patent publication in advance of a patent application may help the patent enter the market and capture the market in the future.

    Disadvantages

    1. If the content of a patent application is published prematurely, others may access to the technical content disclosed in the application, which may harm the interests of the applicant.

    2. For a withdrawn patent application, there is a big difference between a published application and an unpublished application. If the withdrawn application has not been published, the technology can also be owned by the applicant as a technical secret, and a new patent application may be filed in the future; while if the withdrawn application has been published, the technology will be known by the public, and the applicant cannot obtain a patent right for the same content any more.

    3. While the patent publication in advance of a patent application has a negative impact on the patentability of a competitor's subsequent patent application, it may also have a negative impact on its own subsequent patent application, and it has a particularly obvious impact on the series of patent applications generated in the continuous scientific research process.

    The above is just a brief summary of available approaches that the Chinese attorneys often use to speed up the examination procedure of patent applications.  Please feel free to point out any improprieties.