Introduction and Application of Patent Examination Highway (PPH) System

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Release time:2016-07-27

With the soaring number of global patents, the number of patent applications in countries and regions around the world is growing rapidly, and the pressure of patent examination in major countries and regions is increasing day by day. With the gradual implementation of AI A in the United States, the world's largest patent country has revised its "first invention system", which has lasted for more than a hundred years, to "first application system under certain conditions", indicating that countries and regions around the world have a tendency to "converge" in patent examination systems and evaluation standards. This means that countries can make breakthroughs in procedures under the basic principled framework of "independent review". Therefore, in recent years, with the vigorous promotion of Japan and the United States, the P P H system has gradually formed and has been widely used.

1. basic concepts and models of PPH

PPH(The Patent Prosecution Highway), known in Chinese as Patent Examination Highway, is a procedural mechanism to speed up patent examination between agreement countries in the form of bilateral agreements or multilateral agreements. Specifically, when at least one or more power requirements contained in the patent application submitted by the Office of First Filing (OFF) are determined to be authorized, the applicant may apply to the Office of SecondFiling (OSF) for expedited review of the subsequent application.

Under this mechanism, when the patent office of a country that applied for the first time or examined earlier decides to grant a patent, at the request of the applicant, the corresponding application of another patent office that joined PPH will enter this accelerated examination mechanism if certain conditions are met.

To be clear, PPH is not a mechanism for countries to mutually recognize the results of the review on substantive issues, but merely an expedited review mechanism to facilitate applicants. States are still required to carry out substantive examination or other examination procedures for specific patent applications in accordance with their national patent laws.

PPH can be divided into conventional PPH (also known as ordinary PPH) and PCT-PPH. The former is based on a request for accelerated examination submitted to OSF by a national or regional patent office as O F and its authorizable opinion. The latter refers to the applicant of a PCT application, who has received a positive written opinion or an international preliminary examination report from a specific international search authority or international preliminary examination authority, stating that at least one claim in his PCT application is patentable, and the applicant may request the application at the relevant national or regional stage to speed up the examination.

For conventional PPH, it can be divided into Paris Convention path and PCT path according to the difference of OFF application. For the Paris Convention path, it is to enter the OSF through the Paris Convention route within the priority period of the OFF application, and then file a request for accelerated review of the OSF application if certain conditions are met. For the PCT path, it means that both the OFF application and the OSF application are filed in the way that the PCT application enters the national phase, and the applicant makes a request for accelerated examination of the OSF application under certain conditions. (as shown in Figure 1 and Figure 2)

Regardless of the above three models, the core principle is that after the authorization opinion of the "first application" is generated, the applicant can apply to the patent office of the country or region that applied later.

Advantages of 2. PPH

Through the PPH mechanism, countries may have the following benefits for applicants:

(1) The speed of review has been greatly accelerated

According to the data provided by PPH Global Portal, taking the data from January to June 2013 in the United States as an example, the average period from request to pass for conventional PPH is 5.8 months, the average period for PCT-PP H is 5.6 months, and the average period for all applications (including PPH and non-PPH applications, the same below) is 18.8 months; the average period from request to closing for regular PPH is 11.4 months, the average period from request to closing for PCT-P PPH is 9.9 months, and the average period for all applications is 30.7 months.

(2) Increased predictability of applications

Since countries that join PPH will fully consider OFF's search results and affirmative conclusions, although PPH applications are not a mechanism for countries to recognize each other's examination results, in practice, the licensing rate of patents under the PPH path will be greatly improved. According to data provided by the PPH Global Portal, in the United States, for example, the average authorization rate for conventional PPH is 86%, the average authorization rate for PCT-PPH is 88%, and the average authorization rate for all applications is 53%.

(3) Save application costs

The PPH request itself requires no or only a small fee. In the national PPH pilot projects that have been launched so far, no PPH request fee is required for PPH requests made in other offices except for PPH requests made in KIPO.

What's more, PPH can also significantly reduce the application fees for applicants. The reason is that PPH greatly reduces the number of notices issued, so the applicant can reduce the number of responses, thereby reducing the corresponding legal fees, extension fees and other costs in the response process.

In addition, in the overall interest of society, PPH gives national patent offices an opportunity to make full use of each other's review and retrieval resources, improve review efficiency, reduce duplication of work, raise the quality of authorization, and enable global review resources to be efficiently and fully utilized.

Application requirements for 3. PPH

As of September 2013, SIPO has signed bilateral agreements with 12 countries including Japan, the United States, Germany, South Korea, Russia, Denmark, Finland, Mexico, Austria, Poland, Singapore, and Canada, and has launched a pilot project. Among them, in addition to conventional PPH, there are PCT-PPH paths between my country and Japan, the United States, Russia, Finland, Austria, Poland, Mexico, Denmark, and South Korea. In October, PPH agreements were also signed with Portugal and Spain. This means that the Chinese applicant can submit a PPH request to the above-mentioned countries according to the corresponding path selection according to the agreement. In addition to submitting relevant documents, PPH requests also need to meet the following basic requirements:

(1) Timing of PPH request

Countries that have acceded to the PPH have different specific requirements regarding the timing of the request. For example, in Japan, it is required that at the time of the PPH request, the JPO review of the application has not yet begun. The regulations of the United States are similar to those of Japan, and also require that the USPTO review the application at the time of the PPH request has not yet begun; and the PPH expressway cannot be applied to the provisional application, the plant patent application, the design application, and the review procedure. In South Korea, KIPO requires that a request for review must be submitted to KIPO at the time of submission of a request for PPH, or at the same time as a request for PPH is submitted to KIPO; a request for PPH acceleration may be made while the review has not yet been initiated, or after the review has been initiated. As for China, the timing of the request is that the application must have been made public; the PPH request must be made when the application has already entered the substantive examination stage or at the same time as the request for substantive examination is made; the application has not been examined by SIPO at the time of the request for PPH.

(2) Claims need to be fully corresponded

To meet the requirement of accelerated examination, the scope of the claims filed with the O S F must be less than or equal to the scope of the claims of the corresponding applications that are considered authorized or patentable in the OF F. This limitation of the "correspondence" of the claims is relatively strict, basically the same in the text, and if it is similar, it is limited to considering the differences caused by the translation and the format of the claims. The claims of the OSF application may not introduce new or different types of claims compared to the authorizable claims in the OF corresponding application.

For example, in the United States, patents such as "treatment of diseases" may be protected. According to China's patent law, such claims are considered to violate the provisions of Article 25 of the patent law and cannot be authorized. Therefore, when such claims enter our country, they are often revised into corresponding product claims or product application claims to adapt to our country's legal practice. However, this modification will be considered to be inconsistent with the "corresponding" provisions of the PPH application claims and cannot be accelerated.

The Latest Development Trend of PPH in 4.

PPH has been discussed between the United States and Japan from the beginning to more and more countries have joined. This emerging system is still developing rapidly. With the continuous development of the PPH system, the model of PPH is also enriched and developed.

For example, the PPH MOTTAINAI model, at present, there is only a PPH MOTTAINAI agreement between China and Canada. This model breaks through the "first application" principle, and the scope of applications that meet the requirements has been expanded. Under the PPH MOTTAINAI model, expedited examination can be proposed to other offices based on the prior examination opinion of any patent office with patent family application and agreement, regardless of the order in which the application is submitted. The purpose of this is to facilitate flexible use by applicants and to expand the range of applications that potentially meet the requirements.

For another example, the United States proposed a 2.0 version of PPH. Under this framework, the requirements are further simplified and more user-friendly. PPH2.0 retains the practice of expanding eligibility MOTTAINAI disregarding priority. Based on the existing work of any participating office, the use of the OEE-OLE concept requires only that the application be a member of the same patent family and that the specification supports the subject matter claimed.

What is more closely related to China's application practice is that the five bureaus of China, the United States, Europe, Japan and South Korea reached an agreement in Geneva, Switzerland in late September 2013 to launch a five-bureau joint patent examination highway (PPH) pilot project in January 2014. It is pointed out that for an application that has been determined by one of the five bureaus as having an authorizable claim, the applicant may submit a request for accelerated review to the other four bureaus for the corresponding pending application filed by the other four bureaus, subject to other conditions. The PPH request made by the applicant to any of the five bureaux may be based on the results of the international phase of the PCT made by the five bureaux or the results of the national/regional work.

The Significance of 5. PPH to the Patent Development of Chinese Enterprises

Because PPH greatly shortens the authorization time and greatly reduces the cost of authorization, it is also of great help to Chinese enterprises in overseas patent layout, especially for some enterprises with rapid technological updates and a large number of overseas patent applications, the advantages of PPH path are particularly obvious.

However, it should also be realized that while PPH applications are speeding up, there are many restrictions, especially in terms of the timing of applications and the "correspondence" of claims. These details determine:

First of all, there are some applications that cannot enter the PPH channel due to the loss of the right time. For example, China, the United States and Japan have stipulated that they cannot request acceleration after the substantive review in their countries has begun. This requires domestic enterprises to fully understand the review system of our country and other PPH countries, such as the use of our country's early public access to the actual review system, to speed up the acquisition of OF F applications, in order to ensure that there is sufficient time in other countries to calmly enter the PPH accelerated path.

Secondly, the PPH claims must correspond before and after, and this correspondence is almost a very strict literal correspondence. The scope of the claims of the later application can only be the same as the earlier application or smaller than the earlier application, and no new or different types of claims can be introduced. Because different countries have different grasp of the provisions and examination standards of patent law, for example, the United States can allow the existence of patents for the treatment of diseases, while it is prohibited in China, the same technical scheme, in theory, the scope of protection obtained in various countries or regions around the world is not the same. In this way, if you want to pursue the high speed of PPH, it will be followed by the loss of more expectations for the scope of protection of the claims in other countries. If the scope of the claims obtained by the earlier application is too narrow, then the application for PPH acceleration will further limit the scope of the rights of other countries.

In view of the above two main problems, the author believes that the measures that Chinese enterprises can take when using the PPH path are as follows: first of all, it is necessary to carry out a grading system for patents distributed overseas, especially for industries with rapid technological updates. Patent classification is particularly necessary. What is the urgent need to obtain the right, which is to cooperate with the listing of overseas products, for such patents, should first consider the application of PPH. As for the core technology patents and the underlying patents, if more emphasis is needed on the scope of protection, more attention should be paid to using the different examination standards of each country to obtain the maximum scope of power.

Secondly, the selection of the first application acceptance bureau and the time limit monitoring should be adjusted according to the needs of the case. In order to successfully enter the PPH channel, it is necessary to look at the overall situation, grasp the rhythm and sequence of applications from different countries around the world, take into account different types of technical solutions, and ensure that the first application can get a positive authorization opinion with a larger scope of protection as soon as possible, while other countries or regions have not yet started the actual trial. This may put forward higher professional requirements for the patent manager of the enterprise and the external agent serving the enterprise.

Finally, while carefully selecting the receiving office of the first application, we should also conduct an in-depth analysis of the examination opinions of the first application at any time, judge the future direction of the application, the possibility of obtaining the right and the size of the scope that the claim may be affirmed, and make timely adjustments to the future global application strategy of the application according to the judgment. If the prospect of authorization is good and the scope of authorization that may be obtained is large, it should communicate with the examiner in a timely manner, speed up the response, shorten the number of notices, and strive for more time for PPH application. If the prospect of authorization for the first application is not good and the scope of possible authorization is small, the strategy should be changed in time and enter other countries in the ordinary way to strive for a larger scope of authorization.

In short, the PPH highway is a new procedural system that is beneficial to the applicant, which is established in the process of the increasing number of global patent applications, the gradual internationalization of the patent system and the development of standardization. Chinese applicants should fully understand this system and use it to obtain more abundant intangible assets for themselves.

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