Shute Shu XU, Patent Attorney, Partner

In order to meet the needs of applicants to obtain patent rights quickly, the China National Intellectual Property Administration provides corresponding accelerated examination procedures, such as the Patent Prosecution Highway Program (PPH) and the Patent Prioritized Examination Program. Other national and regional patent offices also have similar accelerated patent examination procedures. Here, we only make a simple comparison of the applicable conditions and speed-up effects of the above mentioned two procedures, and introduce how to choose the PPH and Prioritized Examination in China.

1. Applicable Conditions

At present, China has launched PPH pilot programs with 31 national and regional patent offices. The PPH procedure accelerates the examination of Chinese invention patent applications by making reference to the examination results of the corresponding foreign applications. Therefore, the basic requirements for participating in the PPH procedure mainly include two aspects, namely, the Chinese application corresponds to a foreign application, and the foreign application has claims that are recognized as allowable or patentable by the examination institute of another country or region. To meet these basic requirements, a favorable examination result must be obtained for the corresponding foreign application before the applicant submits a PPH request to CNIPA, and the claims of the Chinese application needs to be revised to sufficiently correspond to the allowed claims of the foreign application. Accordingly, the PPH procedure is mainly applicable to patent applications that have been firstly filed in other countries or regions and are examined by CNIPA after a long period of time.

Unlike the PPH procedure, which requires the examination results of foreign applications for reference, the Patent Prioritized Examination procedure mainly speeds up the examination of patent applications in specific fields by tilting examination resources to patent applications in these fields. Article 3 of the "Administrative Measures for Patent Prioritized Examination" stipulates six types of patent applications that are applicable to the Prioritized Examination procedure: (1) involving 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 intelligent manufacturing; (2) involving industries that are highly encouraged by provincial and districted municipal governments; (3) involving the Internet, big data, cloud computing and other fields in which the update speed of technology or product is very quick; (4) the patent applicant or the reexamination requester is ready for implementation of the invention or has started to implement the invention, or there is evidence to prove that others are implementing their inventions; (5) the patent application that was firstly filed in China and then filed for the same subject in another country/region; (6) other applications that are of great significance to the national interest or public interest and require prioritized examination. In practice, the examination of whether a patent application belongs to the technical fields applicable to Prioritized Examination or not is not strict, hence a vast number of patent applications are applicable to the Prioritized Examination program. Moreover, at present the Patent Prioritized Examination program is not only applicable to Chinese applicants, but also to foreign applicants.

Compared with the PPH, the Patent Prioritized Examination only makes relatively broad requirements on the technical fields involved in the patent application, and does not require the patent application has a corresponding allowed/granted foreign application. When submitting the prioritized examination request, the applicant needs neither to wait for the examination result of corresponding foreign application, nor amend the claims of Chinese application to the allowed/granted claims of corresponding foreign application. Therefore, the applicant can file a prioritized examination request earlier, and may maintain claims not limited to those allowed/granted in the corresponding foreign application, thereby possibly obtaining a more satisfactory scope of protection.

In addition, the Prioritized Examination procedure is also applicable to utility model and design patent applications (beside invention patent applications), and applicable to all stages of patent examination, including substantive examination, reexamination and invalidation stages. The PPH procedure is only applicable to the substantive examination stage of an invention patent application, and the PPH request shall be filed after publication of the application and before issue of the first office action. Moreover, the Prioritized Examination procedure can be used in the substantive examination phase of invention patent applications, the formality examination phases of utility model and design patent applications, as well as the reexamination and invalidation phases of invention, utility model and design patent applications. In terms of variety of patent types and examination stages, the Prioritized Examination procedure has outstanding advantages.

2. Speed-Up Effect

The speed-up effect of PPH mainly reflects in that the patent applications entering PPH procedure can obtain acceleration to examination. Compared with normal patent applications, the examiner will issue the first office action faster for the patent applications that have entered PPH procedure. In addition, under the PPH procedure, the examiner will take the examination history and results of the corresponding foreign application as a reference, and as the pending claims of the Chinese application have been amended to the same scope with or a smaller scope than those allowed/granted in the corresponding foreign application, possibly fewer rejection of novelty/inventiveness will be raised against the Chinese application. Therefore, the time on overcoming the defects of novelty/inventiveness may be shortened, and the likelihood of being rejected by CNIPA may be relatively small.

However, the PPH program does not prescribe any time limit for examination. For example, after issuance of the first office action, the response time limit has no difference from that of normal applications. The examination process of the patent applications under PPH can be considered similar to that of the normal applications, and the applicant is allowed to request for extension of the time limits for responding to office actions. According to the statistics of CNIPA, it takes an average of 2.2 months from submission of PPH request to issuance of the first office action, and 11.2 months to allowance or rejection of the application, during which an average of 1.42 office actions will be issued; while for a normal application, it usually takes one year or more from entering substantive examination proceeding to receipt of the first office action, and mostly two or three office actions will be issued during the examination process.

Compared with PPH, a prominent feature of the Prioritized Examination program lies in clearly stipulating the time limits of examination. Article 10 of the Administrative Measures for Prioritized Examination Procedure provides that where the request for prioritized examination is accepted by CNIPA, the examination of the application shall be completed within the following time limits from the acceptance date:

(1) Cases of invention patent applications shall be closed within one year, with the first office action to be issued within 45 days from the acceptance date of the prioritized examination request.

(2)  Cases  of  utility  model and design patent applications shall be closed within two months.

(3) Patent reexamination cases shall be closed within seven months.

(4) Cases of invalidation for invention and utility model patents shall be closed within five months, and cases of invalidation for design patents shall be closed within four months.

In addition, Chinese applications that have entered prioritized examination procedure is not allowed to request for extension in principle; once an extension request is submitted, the application will no longer enjoy further acceleration under the prioritized examination program, and return to the normal examination process.

It can be seen that the examination time limits stipulated under the Prioritized Examination procedure is significantly shorter than the average time for examination of normal applications. In practice, it is found that the first office action will be issued typically in about half a month since the acceptance date of prioritized examination request. In order to meet the requirements of prioritized examination, the time limit of responding to the office action has been shortened to 2 months from the office action issue date for invention applications, and to 15 days for utility model and design patent applications. By ruling a significantly shortened examination period and response time limit, the Patent Prioritized Examination procedure accelerates the examination process at both sides (the examiner and the applicant), so as to achieve faster examination than the PPH procedure.

In practice, foreign applicants intend to use the PPH program more than the prioritized examination program, probably because they are more familiar with the PPH program. Through the comparison of the above two procedures, it can be noted that the Patent Prioritized Examination procedure has the advantages of looser applicable conditions and more obvious speed-up effect. 

To sum up, the foreign applicants are recommended to consider using PPH if satisfied with the examination results of the corresponding foreign application; on the contrary, they may consider using the Prioritized Examination procedure. For Chinese applicants who want to speed up the examination of first-filed Chinese patent applications, the Prioritized Examination procedure is undoubtedly the preferred choice.