- Types of PPH requests acceptable by the SIPO
PPH can be either conventional PPH or PCT-PPH. In the former, the request may be made based on the national work products from an examination department of a prior office.
In the PCT-PPH, the request may be made based on the Written Opinion from the International Search Authority (WO/ISA), the Written Opinion from the International Preliminary Examining Authority (WO/IPEA) or an International Preliminary Examination Report (IPER). Note that the applicant cannot file a request under PCT-PPH on the basis of an International Search Report (ISR) only. In case any observation is described in Box VIII of WO/ISA, WO/IPEA or IPER which forms the basis of a PCT-PPH request, the application will not be eligible for participating in PCT-PPH pilot program.
- Time for filing PPH request to the SIPO
Note that the application must have been published before, or when, the applicant files the PPH request.
After the application is published, there are two opportunities for the applicant to file the PPH request. The applicant may (1) file the PPH request simultaneously with the Request for Substantive Examination; or (2) file the PPH request after the application has entered into substantive examination stage, but the SIPO has not begun examination of the application at the time of the request for PPH, i.e., the applicant should have not received any office action issued from the substantive examination departments in the SIPO before, or when, filing the PPH request, wherein the office action issued from the substantive examination departments includes a Notification to Make Divisional Application and other notifications issued from the substantive examiner. In case that the PPH request is filed simultaneously with the Request for Substantive Examination, the SIPO will not start to check documents relevant to the PPH request until the application enters into the substantive examination stage. Therefore, the applicant does not have to file the PPH request simultaneously with the Request for Substantive Examination.
For the same application, the applicant is given at most two opportunities for submitting the PPH request.
- Time limit of amendment for ensuring sufficient correspondence of claims
In order to make the claims in the SIPO application sufficiently correspond to those patentable/allowable claims in the corresponding application (e.g., a JP application), the applicant may need to amend the SIPO application according to the patentable/allowable claims in the corresponding application. At this time, the applicant needs to care about the time limit of amendment in order to make claims in the SIPO application correspond to the claims determined to be patentable/allowable in the corresponding application, i.e., when a Request for Substantive Examination is made and within the time limit of three months after the receipt of the Notice of Invention Patent Application Entering into Substantive Examination Stage.
- Sufficient correspondence of claims
Claims are considered to “sufficiently correspond” where the claims in the SIPO are of the same or similar scope as the claims in the corresponding application, or the claims in the SIPO are narrower in scope than the claims in the corresponding application. A claim that is narrower in scope occurs when a patentable/allowable claim in the corresponding application is amended to be further limited by an additional technical feature that is supported in the description and/or claims. A claim in the SIPO which introduces a new/different category of claims is not considered to sufficiently correspond.
- Procedure for the accelerated examination after the PPH request is granted
If the SIPO decides that the PPH request is acceptable, the SIPO application is assigned a special status for an accelerated examination under the PPH. For applications waiting for examination under normal procedure, the first office action is generally issued within 6 months to one and a half year after the application enters into the substantive examination stage. For applications assigned with special status for accelerated examination under the PPH, an average pendency from grant of the PPH request to the first office action is 1 to 3 months, and most first office actions raise merely objections about informalities and the application may be granted after response to the first office action is submitted. Thus, the PPH pilot program greatly accelerates the examination, shortens the examination procedure and saves examination fees, and the application may be granted earlier.