Riding the patent highway to fast-track SIPO examinations

The term “patent prosecution highway” (PPH) means that if at least one or more of the claims of the application have been determined to be patentable/allowable by the Office of First Filing (OFF), as long as the relevant second application satisfies certain conditions, the applicant may, on the basis of OFF work products, request that the office of second filing (OSF) fast-track the examination.

Usually the PPH will take one of two forms – the conventional PPH or Patent Co-operation Treaty PPH (PCT-PPH). The conventional PPH is a request made to the OSF on the basis of the work products of the OFF, e.g. the examination opinion notice, grant decision, etc. PCT-PPH is a PPH request made to the OSF on the basis of the work products at the PCT international phase, namely the written opinion of the International Searching Authority, written opinion of the International Preliminary Examining Authority, or an international preliminary examination report.

The PPH is carried out on the basis of a bilateral or multilateral agreement. China’s State Intellectual Property Office (SIPO) is currently carrying out a PPH pilot programme with Japan and several other countries. The five offices – the European Patent Office, Japan Patent Office, Korean Intellectual Property Office, SIPO and the US Patent and Trademark Office – commenced the three-year PPH pilot programme on 6 January 2014.