Extending a UK patent to China is now easier thanks to a Patent Prosecution Highway (“PPH”) agreement between China and the UK, announced by the UKIPO this week. The UK IP Minister, Lord Younger, said: “The launch of the PPH with China will enable innovative British businesses to obtain patent protection in China more quickly and cheaply than ever before. This can only help to encourage growth and enable UK businesses to work more closely with one of our most important partners.”
A PPH is an arrangement between two countries (say, countries A and B) whereby a patent applicant can request to speed up their patent application procedure in country A, on the basis that an equivalent patent has been allowed in country B. The rationale behind a PPH arrangement is that the patent examiner in country A should be able to quickly satisfy himself that the patent can be granted based on the decision of the patent examiner in country B. Such schemes have been in existence for some years. Examples include PPHs between the USA, Japan and the European Patent Office (EPO), as discussed in our previous article, as well as PPH agreements involving multiple countries, and now, as of 1 July 2014, between the UK and China.
There has been an increase in the number of PPH agreements in recent years and these are becoming more popular. However, the numbers of patents granted under the schemes have not been spectacular. One reason for this is that the schemes usually require that the claims in the two patent applications are the same, or very similar. However, different countries apply their own patent laws and regulations, leading to different requirements for the form and content of claims. There may also be other procedural reasons why an examiner will not accede to a PPH request. For example, if the examiner in A has already started examination of the application and has relied on different prior art for assessing the novelty and inventiveness of the claims, then they will not (or will be very unlikely to) simply accept the opinion of the examiner in B.
The new scheme announced between the UK and China has similar limitations. For instance, it is not enough to simply file a second application in China and refer to an allowed UK application. The applications must also be linked by a so-called “priority claim”, and a PPH request must be made before the examination of the second application has begun. In practice, it can be a challenge to have the first application allowed before the examination of the second application has commenced. However, provided that such requirements are met, the PPH route can be faster and cheaper than a separate application procedure in China. With increasing commerce and trade between these countries, this can only be good news for businesses seeking to exploit their technology in these two important markets.