Patent Examination Highway (PPH) Pilot Program of the United States Patent and Trademark Office and China's State Intellectual Property Office

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Release time:2016-05-12

The United States Patent and Trademark Office (USPTO) is developing a 2010-2015 strategic plan to transform itself into a more quality-focused, efficient and responsive organization that supports a market-driven intellectual property system. A specific measure of the strategic plan is the sharing of search results with other IP offices. By forming partnerships with other IP offices to obtain search results, the USPTO can reduce duplication and backlogs. From July 2006 to January 2008, the USPTO worked with the Japan Patent Office (JPO) on the first Patent Examination Highway (PPH) pilot project.
PPH makes use of the existing accelerated examination procedures of the two offices to enable applicants to obtain relevant patents more quickly and efficiently. PPH also allows offices to benefit from work done earlier by other offices, thereby helping to reduce workload and improve patent quality. Since 1 of 2008
From April 4, USPTO and JPO began to fully implement the PPH project.
On January 28, 2008, the USPTO launched a PPH pilot project with the Korean Intellectual Property Office (KIPO). The pilot project ended on 28 January 2009 and was fully implemented the following day.
in addition, the USPTO has also been in cooperation with the United Kingdom Intellectual Property Office (UK IPO), the Canadian Intellectual Property Office (CIPO), the Australian Intellectual Property Office (IPAU), the European Patent Office (EPO), the Danish Patent and Trademark Office (DKPTO), the Singapore Intellectual Property Office (IPOS), the German Patent Office (DPMA), the Finnish National Council for the Registration of Patents (NBPR), the Hungarian Patent Office (HPO) and the Russian Patent Office (Rospatent) (SPTO) as well as the Austrian Patent Office (APO) initiated the PPH pilot project, the project framework and the PPH between the JPO are the same or similar.
Building on these partnerships, the USPTO and the State Intellectual Property Office of China (SIPO) have agreed to launch the PPH pilot project, similar to the PPH pilot project described above.
II. The Patent Examination Expressway (PPH) Pilot Project PPH aims to help applicants obtain priority examination for corresponding applications filed in the Second Application Office (OSF) based on claims deemed to be authorized/patentable in the First Application Office (OFF), while allowing OSF to use OFF's search and examination results.
If the USPTO is OFF and the US application contains a claim that can be granted/patentable, the applicant may request an accelerated review of the corresponding application filed in SIPO as OSF. The process and requirements for making a request to SIPO to participate in the PPH pilot project are available on the SIPO website.
When the USPTO is an OSF and the corresponding application accepted as an OFF SIPO contains a claim that can be granted/patentable, the applicant may request the USPTO to participate in the PPH pilot project and request that his US application be reviewed first in accordance with the Director's Order of 37 CFR 1.102(a) Expedited Transactions. Note that the special request procedures for expedited items under 708.02(a) of the Patent Examining Manual (MPEP) do not apply to requests for expedited items under the Administrator's 3 Order under 37 CFR 1.102(a) for expedited matters. The process and requirements for requesting participation in the PPH pilot program to the USPTO are as follows.
A. Duration of the PPH pilot project
The PPH pilot project was launched on December 1, 2011 and will last for one year until November 30, 2012. If necessary, it can be extended for up to one year to fully evaluate the feasibility of the PPH project. The USPTO and SIPO will evaluate the results of the pilot project to determine whether and how the project will be fully implemented after the end of the pilot. The two offices may terminate the PPH pilot program early if participation exceeds manageable levels, or for any other reason. If the project is terminated before November 30, 2012, it will
Issue a notice.
B. Requirements for the USPTO to Request Participation in the PPH Pilot Program In order to be able to participate in the PPH Pilot Program, the following conditions must be met:
(1) The US application is
(a) Paris Convention application
(I) a valid claim of priority to one or more SIPO applications under 35 U.S.C. 119(a) and 37 CFR 1.55, or (ii) a valid claim of priority to a PCT application that does not claim priority under 35 U.S.C. 119(a)/365(a); or (B) a PCT international application that satisfies 35 U.S.C. 371 entry into the U.S. national phase, this PCT International Application 4 (I) validly claims the priority of an SIPO application under 35 U.S.C. 365 (B), or (ii) validly claims the priority of a PCT application without priority under 35 U.S.C. 365 (B), or (iii) without a priority claim; or (c) a so-called bypass application filed under 35 U.S.C. 111(a), the benefit of a PCT application is effectively claimed under 35 U.S.C. 120 which (I) effectively claims priority to a SIPO application under 35 U.S.C. 365 (B), or (ii) effectively claims priority to a PCT application without priority under 35 U.S.C. 365 (B), or (iii) without priority.

The following are to meet the requirements

(1) Examples of US applications:

(1)(a)(I): -US application, claiming priority over one Chinese application through the Paris Convention route 5-US application, claiming priority over multiple Chinese applications through the Paris Convention route-the Paris Convention route, domestic Priority Chinese Application Indicates Authorizable Claim in Notice of Review Opinion or Authorization Decision Priority Claim U.S. Application PPH Request U.S. Application PPH Request Chinese Application 2 Priority Claim Chinese Application 1 Indicates Authorizable Claim Chinese Application 1 Chinese Application 1 Chinese Application 2 Indicates Authorizable Claim in Notice of Review Opinion or Authorization Decision PPH Request Priority Claim 6PCT Application Priority Claim US Application PPH Request China DO * Application Indicates in the Notice of Review Opinion or Authorization Decision that there are Authorizable Claims-Paris Convention Pathway, divisive application (1)(a)(ii): -US application * DO-Designated Office claiming priority to a PCT application through the Paris Convention route, as follows.
(1)(b)(i): 

    US Application

    2PPH Request for US Application

1 Priority requirements
division of casesChina Application
In the review of the notice of opinion orThe authorization decision indicates that there is a possibility.Authorized claim 7-The US application is an application for the entry of a PCT application into the US national phase, whichPCT Application Claims Priority of Chinese Application Through Paris Convention Route-PCT pathway(1)(b)(ii):-- The U.S. application is an application for the PCT application to enter the national phase.Please claim priority of another PCT application through the Paris Convention routeChina Application 1In the review of the notice of opinion orThe authorization decision indicates that there is a possibility.Authorized ClaimsPriority claimPPH RequestPCT ApplicationChina DO Application 2US DO ApplicationChina's application in the review of the notice of opinion orThe authorization decision indicates that there is a possibility.Authorized ClaimsPriority claimPPH RequestPCT ApplicationUS DO Application 8PCT ApplicationPriority claimPPH RequestPCT ApplicationNotice of comments in the reviewIn the book or authorization decisionIndicates that there is an authorisableClaimChina DO ApplicationUS DO ApplicationPCT ApplicationPriority claimPPH RequestPCT ApplicationNotice of comments in the reviewIn the book or authorization decisionIndicates that there is an authorisableClaimUS DO ApplicationChina DO ApplicationNo priority claim-Direct PCT and PCT pathway(1)(b)(iii): -- U.S. application is a PCT application without priority claim to enter the U.S. national order.Application of paragraph 9(1)(c)(i): S. application is a 111(a) bypass application of the PCT application, whichApplication to claim priority from China through the Paris Convention route (1)(c)(ii): S. application is a 111(a) bypass application of the PCT application, whichApplication to claim priority of another PCT application through the Paris Convention routePCT ApplicationNotice of comments in the reviewIn the book or authorization decisionIndicates that there is an authorisableClaimPPH RequestChina DO ApplicationUS DO ApplicationNotice of comments on the review of Chinese applications
In the book or authorization decisionIndicates that there is an authorisableClaimPriority claimPCT Application US Application PPH RequestArticle 120 Claim for Interests 10PCT ApplicationPriority claimPPH RequestChina DO ApplicationUS ApplicationPCT ApplicationArticle 120 Claim for InterestsNotice of comments in the reviewIn the book or authorization decisionIndicates that there is an authorisableClaim(1)(c)(iii): -- U.S. applications are 111(a) next to PCT applications without priority claims.Road ApplicationA Chinese application with an authorizable or patentable claim does not have to be a U.S. application.The priority claim basis of the national application (basic application). Chinese application can be the basisA derivative application of an application, such as a divisive application for a base application. Note that if you have aChinese applications that grant or have patentable claims are not priority to U.S. applications.The applicant must clearly indicate that it is authorized or patentable.PCT ApplicationIn the review of the notice of opinion orThe authorization decision indicates that there is a possibility.Authorized ClaimsPPH RequestChina DO ApplicationUS ApplicationArticle 120 Claim for Interests 11The Chinese application of the claim and the Chinese application as the basis for the priority claim of the U.S. application.The relationship between the request, such as China with a license or patentability claim.Application X is a divisive application for China to apply for Y, and the US application requires China to apply for Y.Priority.
provisional application, plant application, design application, reaward application, review procedure,As well as confidential applications are excluded and cannot participate in PPH.
(2) The Chinese application must have at least one claim deemed to be eligible by SIPOAuthorized/Patentable. The Chinese application with an authorizable claim cannot.It is a utility model application, and the applicant cannot rely on these authorisable rights in the Chinese application.Leigh requested a PPH request in respect of the U. The applicant must submit a Chinese applicationA copy of the authorized/patentable claim and its English translation, and in the right.Where the request is not in English, a statement of accuracy in the English translation is attached. IfSIPO's Notice of Review does not expressly state that a claim is authorizable,The applicant must submit a request for participation in the PPH pilot project or a letter of transmission accompanying the request for participationIt contains the following statement: Notice of SIPO's review opinion on the claimNo reason for rejection is given, therefore the claim is considered by SIPO to be authorisableof.
(3) All claims for U.S. applications requesting participation in the PPH pilot program must beMust be fully in line with the claims in the Chinese application that are considered to be authorized/patentable.Corresponding, or fully corresponding after modification. Taking into account the translation and claim formatIf the claims have the same or similar scope, thenThe claim is considered to be a sufficient correspondence. Applicants must also submit rights in EnglishThe corresponding table is required. The claim correspondence form must state all rights applied for by the United States 12How the request is filled with the claims of the Chinese application for authorization/patentability.corresponding.
(4) The review of the U.S. application for participation in the PPH pilot program has not yet begun.
(5) The applicant must submit a request for participation in the PPH pilot project and a basis for 37CFR 1.102(a) Director's Order for Expedited Transactions Requesting Priority Review of U.S. ApplicationsRequest. The request sample form (PTO/SB/20CN) can be found inThe USPTO website is http://www.uspto.gov available. USPTO Encourages Applicants to MakeRequest table with USPTO. Requests not subject to 37 CFR 1.17(h)Fee. See Notice on Exemption of Request Fee for Submission of Special Requests under PPH,75 FR 29312 (May 25, 2010).
(6) The applicant must submit, as the basis of the request, an authorizable/All (related to patentability) examinations of Chinese applications for patentability claims.A copy of the notice of opinion and its English translation, and in the review of the notice of opinion is not English.In the case of the text, a statement of the accuracy of the English translation is attached. In addition, participation in the PPH pilotAfter the project request is approved, the applicant must still submit the relevant Chinese application to the USPTO.A copy of any (patentability-related) notice of review opinion (in particularcircumstances in which SIPO overrides an original authorizable opinion).
(7) The applicant must submit an Information Disclosure Statement (IDS) listing the SIPO review.The literature cited by the inspector in the notice of review opinion (the above IDS has been attached to the U.S. application.Please submit except). The applicant must submit a notice of SIPO reviewcopies of all documents (except those copies already filed with the U. S. application), referencedS. patents and published U. S. patent applications need not be filed. 13Requests for participation in the PPH Pilot Program and all supporting documentation must be submitted to the USPTO via EFSWeb with the document "PPH-based Special Request"Knowledge. Information on EFS-Web can be foundhttp://www.uspto.gov/ebc/efs_help.html获得 。 With PPHAny preliminary modification and IDS submitted in the document must be separately marked as preliminary modificationand IDS.
Upon approval of the request for participation in the PPH pilot project and the special status, the USPTO willNotify applicants that their U.S. applications will receive priority review. For failure to comply with the aboveThe USPTO will notify the applicant of all required requests to participate in the PPH pilot project.Know the defects of the request. The applicant has one chance to overcome the defect and resubmitParticipation request (must still pass the EFS-Web and be identified as above). Attention, reviewThe member will not be delayed by waiting for the applicant to resubmit the response to the participation request to overcome the defect.Delayed review of the application. That is, if the applicant is notified at the USPTOAfter the request is defective, the application is selected by the examiner for review, then, any.A resubmitted request will not be entertained. If the resubmitted request overcomes the lackAt the same time, the review has not yet begun, so the request and special status are approved.
The USPTO will notify applicants that their U.S. applications will receive priority review. If the request is stillDefects, the USPTO will notify the applicant and its application will await review in accordance with normal procedures.Check.
(8) The request for patent application to participate in the PPH pilot project and the special status is approved,It will not benefit its continued application. In order to obtain special status for a continuing application, the applicant mustAll of the above conditions must be met. 14If any of the documents referred to in (2), (6) and (7) above are submitted in
With the PPH pilot project request previously attached to the US application submission, the applicant is not required to accompanySubmit these documents again with participation request. Applicants can simply cite these documents.and indicate in the request to participate in the PPH pilot project when these documents were attached.S. filing.
C. Special review procedures
Once the United States request for participation in the PPH pilot project and its special status are approved,The U.S. application will be reviewed in all categories except the following categories.Examiner to review: clear authorized applications, applications with a set time limit (e. g. reviewInspector's response), as well as applications that have been granted "expedited review" special status.
After the request to participate in the PPH pilot project is approved, any rights to be modified or added.The request must be fully matched with the claims of authorisable/patentability in the Chinese application.Should. Applicants are required to attach a corresponding table of amended submitted claims (see B.(3)). If the amended or added claim and the Chinese application may be authorized/Insufficient correspondence of patentable claims, amendments will not be accepted and deemedUnresponded reply.
PPH programs do not exempt applicants from 37 CFR 1.56 and 37 CFR 11.18The obligations to be assumed. By meeting the above requirements B.(6) and (7), ShenThe petitioner is deemed to have fulfilled any substantial prior art notification that would refer to the corresponding application.obligations of the USPTO (see MPEP 2001.06(a)). Applicants should remain in good faith.The obligation to be trustworthy, including providing the USPTO with the material influence it knows, can be used exclusively.Other information on profitability.