It has been a common practice for foreign applicants to file a PPH request to expedite the examination of a Chinese patent application based on a positive examination result of a foreign counterpart application, if expedition is the priority and the scope of the foreign examination result is also commercially acceptable. This would essentially conform the Chinese claims to the claims allowed for the foreign application (or a PCT application).
China currently has 20 PPH programs with almost all the major patent offices in the world, including the most-often used IP5 PPH program among China, the United States, Europe, Japan and Korea. It also accepts a PPH request based on the positive Written Opinion or International Preliminary Examination Report made by an International Search Authority or Preliminary Examination Authority.
According to the latest official statistics, SIPO received 3973 PPH requests in 2014 (against 928,000 new invention patent applications filed in the same year). Although no official data has been given, the PPH requests filed in 2015 and 2016 should be in the range of 4000-5000. From empirical data we have collected, PPH requests can effectively expedite examination.
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We believe that the primary benefit of a PPH request is that it puts the subject application in an earlier position in the examiner's working queue and thus the examiner issues the First Office Action earlier.
The examiner is still supposed to perform his/her examination independently from the foreign/PCT examination result. The reduction in the number of office actions and the quicker allowance are more because of the amendments (usually narrowing) the applicants make to the claims when conforming to the foreign/PCT application, which could still be achieved with mere voluntary amendments without a PPH request.
2. Timing to file the PPH request
(1) After the Entry into Substantive Examination Notice is issued but before the examiner issues any office action; or It is recommended that the PPH request be filed within 3 months after the Entry into Substantive Examination Notice is received, during which period the applicant also has the right to file voluntary amendments to the application so as to conform the Chinese claims to the claims allowed for the foreign counterpart application.
(2) At the same time of requesting for substantive examination, on the condition that the subject application has been published (in this situation, the PPH examiner will not process the PPH request until the Entry into Substantive Examination Notice is issued) The applicant also has the right to file voluntary amendments to the application when requesting for substantive examination.
3. Complete conformity recommended
Under the official rules, a PPH request will be accepted if the Chinese claims are the same or narrower than the claims of the foreign or PCT application. But in practice, we recommend a complete conformity. The PPH examiners of SIPO are very strict and rigid with the formalities and they are usually impatient to spend time finding out if a different Chinese claim is still narrower than a foreign claim. Also, SIPO gives applicants only one chance to revise a rejected PPH request or file a fresh PPH request. We thus recommend fully conforming the Chinese claims (ideally verbatim) to the claims of the foreign or PCT application.