To Accelerate Overseas Patent Layout by PPH System

By the news released on the website of the State Intellectual Property Office (SIPO), the PPH respectively between China and Japan, USA, Germany, South Korea has been launched for a test run of 1 year.

Then what is PPH? What benefit may company gain from it in the patent layout? DeBund Law Offices, the mother institution of our website, is qualified as the patent agency institution. Today, we invite Mr. Gao Shaoyi, who once worked in Huawei as the patent engineer to share us his understanding on the PPH sysem.

I. The introduction to PPH

PPH is the abbreviation of Patent Prosecution Highway, by which when the Office of the First Filing (OFF) thinks one or several items in a patent application could be granted the right and the following application in other countries could meet some conditions, like the first and second application shall be fully corresponding and the work of OFF could be available to the Office of the Second Filing (OSF), the applicant may demand the acceleration of the patent granting in the OSF.

Currently, the PPH system is piloted among some countries, like USA and Japan, USA and UN, Japan and South Korea, and all are operating well now.

II. The conditions for the application of PPH

The following conditions shall be met when the applicant would like to accelerate the patent granting in other countries through PPH:

1. The case scope

The case applicable in PPH shall first be accepted by OFF which means the applied case could be granted the patent right to the opinion of OFF, and meanwhile it’s also applied through the Paris Convention or PCT in OSF who has not started the examination on the applied patent.

2. The time period

According to the guidance of PPH issued on the website of SIPO, between China and the PPH parties, the applicant shall make the application within the agreed piloting period by the countries, to take the cooperation between Sino-Japan as the instance, the application shall be made during 2011.11.1 to 2012.10.30.

3. The document

The documents demanded include the examined documents in OFF, the right demands for the right grantable, and document for the corresponding relationship between the right demands of OSF entering and the right demands of the right grantable.

4. The examination results

Once the application is accepted by OSF under the PPH, it could enjoy the acceleration under the system which could lead to the direct patent right granting without the material examination.

On the other hand, when OSF deems some documents submitted by the applicant are of defect, a chance for modification will also be granted, by which the applicant may be entitled to make the application for once more even the OSF issues the denial notice of acceleration examination.

III. The benefit to the overseas patent layout under PPH

1. The less examination period

In current, to the patent examination period, it demands at least 3 or more years from the application to the examination result for a Chinese patent’s filing in other countries. But, under the PPH the result is available in 3 to 6 months, like a case handled by us recently, the Chinese patent only costs 3 months before the granting in Japan.

2. The higher granting rate

For the various examination system in the countries, the criterion for approval also varies among the examiners, which usually result in the consequence that a patent granted in one country may be denied in the other, like those local registered patent in China may be denied in USA or Europe. However, the problem will no longer exist in PPH, for once the document submitted could meet the standard, the patent granted in China will normally be granted in corresponding countries applied.

3. The less cost

Currently, the patent application in Europe, USA or Japan may consume much of a huge lawyer’s fee is inevitable in the reply to the examination opinions in the phrase of substantial examination. But with the PPH system, such fees could be saved.

4. The consistent right demands of within the same family

For the application in other countries under PPH, the applicant may make the application with the right demands approved by OFF, thus either the right granting in the second filing nation or the consistency of the right demands in the patent family could be guaranteed.

5. The less burden to the applicant

In the PCT application, the applications in the countries may face the substantial examination. Therefore the applicant has no choice but to negotiate and communicate with the lawyers and examiners in the countries for several time, which may lead to a waste of time and energy. On the other hand, in the PPH, with the reduced substantial examination, the burden of the applicant could be reduced to some extent for the saving of costs and time.

IV. How to use the PPH

Although the PPH is still in the piloting phase, the company with the demands of overseas patent layout could be the first triers. And such system could be continued after the piloting period. The following preparation could be made by the companies planning to carry out the overseas patent layout under PPH:

1. To make the application for the granting acceleration when the applied case meets the demands of the PPH cooperated country

Chinese companies may make an examination of the patent applied to the cooperating countries under PPH like USA, Japan, Germany and South Korea for the demands meeting, once it’s qualified, the application to the acceleration is advised.

The companies from cooperating countries in PPH include USA, Japan, Germany and South Korea may also make such examinations for the compliance, and the application to the acceleration is also suggested once the demands could be met.

2. To reduce the local examination time for the patent in the same family and to extend the PCT entrance period in the countries related

To reduce the local examination time on the patent, like the earlier open, less reply time and date to the patent applied in China, and to the new application it’s suggested to be made in electronic ways; to the patent applied in USA, it could start the review with the examiner after the first examination opinion.

To extend the period of the entrance to specific country in PCT. When the company first made the PCT application, it may choose to enter the corresponding PPH countries before the expiration of PCT period, which could promise the decision of local patent examination could be made before the consideration on the application of the patent in other countries, and also that could enable the company to decide whether to use the PPH system basing on the local decision on the application.

3. To prepare the application document by the PPH guidance

When preparing the PPH material, it’s suggested entrusting the professional institutions and to prepare the documents strictly by the PPH guidance, therefore to try to get approval from the PPH filing administration for one time.

Attachment: the piloting period of PPH with some countries

Sino-Japan: 1 year from 2011.11.1
Sino-USA: 1 year from 2011.12.1
Sino-Germany: 1 year from 2012.1.23
Sino-South Korea: 1 year from 2012.3.1

Web links for the PPH application guidance:

Gudance to Sino-USA PPH :
http://www.sipo.gov.cn/ztzl/ywzt/pph/zn/201111/t20111125_633238.html

Guidance to Sino-Japan PPH:
http://www.sipo.gov.cn/ztzl/ywzt/pph/zn/201105/t20110525_605293.html

Guidance to Sino-Germany PPH:
http://www.sipo.gov.cn/ztzl/ywzt/pph/zn/201201/t20120121_642426.html

Guidance to Sino-South Korea PPH:
http://www.sipo.gov.cn/ztzl/ywzt/pph/zn/201202/t20120229_647556.html

Other recommended posts on our websitr:
1.How to manage the company’s patent?
2.How to apply for the 2-dimensional bar code in China?
3.The Patent Prosecution Highway is Piloting in China.
4.How to apply for the pre-litigation injunction in China? (I)
5.The First Primary People’s Court with Jurisdiction over Patent Disputes in China
6.China and Germany lauch Patent Prosecution Highway (PPH)

Quoted from DeBund Newsletter.

Author: Gao Shaoyi
Attorney-at-law of DeBund Law Offices

Founder & Editor-in-Chief of Bridge IP Law Commentary
Mr. You Yunting
Partner & Attorney-at-law of Shanghai DeBund Law Offices
Email: Bridge@chinaiplawyer.com, Tel: 8621-5213-4900,
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Bridge IP Law Commentary is a website focus on the introduction of commercial laws in China, especially the intellectual property laws. All the posts here are our original works. And all news or cases referred here are from public reports, and our comments or analysis are of due diligence, neutrality and impartiality, representing our own opinions only and are our original works. You may contact us shall you have any opinions or suggestions.

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