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The People’s Republic of China and the United States of America Implement a Patent Prosecution Highway to Speed Examination of Each Others’ Patent Applications

Update
12.22.2011

As of December 1, 2011, the United States and China have implemented a Patent Prosecution Highway (PPH) to expedite examination of each others’ patent applications.  The PPH is available for patent applications filed via the Patent Cooperation Treaty (PCT) and via the Paris Convention.

In order for a Chinese patent application to qualify under the PPH, the Chinese application must meet the following requirements:

  • The Chinese application must claim priority to a U.S. application directly via the Paris Convention, indirectly via the PCT, or be a Chinese national phase entry of a PCT application where the United States was the International Search Authority;

  • The U.S. application must include an indication of patentability of at least one claim in a Notice of Allowance or an Office Action, or the PCT application must indicate patentability in a PCT work product; 

  • All claims in the Chinese application must sufficiently correspond to the patentable claims in the U.S. or PCT application (i.e., the Chinese claims must be similar in scope or narrower than the U.S.-allowed claims);

  • The Chinese application must be published;

  • The Chinese application must have entered into substantive examination (i.e., received a notice of entering substantive examination); alternatively, a request to participate in the PPH can be made when filing a request for exam; and

  • The China State Intellectual Property Office (SIPO) must not have issued any substantive examination office actions for the Chinese application.
Starting March 1, 2012, the Chinese patent application also must have been filed electronically to participate in the PPH.

In addition to a Request to Participate in the PPH, the applicant must submit (a.) Chinese translations of an “Allowable Subject Matter” section of the relevant U.S. office action, (b.) list of References cited by the U.S. Patent and Trademark Office (USPTO) examiner,  (c.) a claims correspondence table; and (d) copies of all office actions from the USPTO which are relevant to substantive examination for patentability.  The applicant may also submit Chinese translations of all office actions from the USPTO.

To participate in the PPH in the USPTO based on a Chinese application, similar requirements must be met and similar documents must be submitted with translations.  However, publication and substantive examination of the U.S. application are not required.

The PPH is set to run through November 30, 2012 and will most likely be extended based on experience with PPHs with other countries.  As the average pendency of a patent application in the United States is 33.9 months from filing (as of October 2011, according to the USPTO) and about two years from requesting exam in China, the possibility of speeding up examination is welcome.

© 2011 Perkins Coie LLP