The State Intellectual Property Office of China Launches Work-sharing Initiatives with Japan and US Patent Offices
published on 10 Jan 2012
Commencing on November 1, 2001, the State Intellectual Property Office of China (SIPO) launched a one-year pilot Patent Prosecution Highway (PPH) with the Japanese Patent Office (JPO). Subsequently on December 1, 2011, the SIPO launched another PPH pilot with the United States Patent and Trademark Office (USPTO).
These pilot programs will apply to qualifying patent applications filed under both the Paris Convention (“Paris Route”) and the Patent Cooperation Treaty (PCT). The eligible applications for requesting accelerated examination at the SIPO under either the SIPO-USPTO or the SIPO-JPO PPH pilot programs are as follows:
(1) The SIPO application, including PCT national phase application must be:
i. An application that validly claims priority under the Paris Route to a first-filed Japan or US application, or
ii. A PCT national phase application with no priority claim, or
iii. An application that validly claims priority under the Paris Route to a PCT application with no priority claim.
The SIPO application with multiple priority claims to JPO/USPTO or direct PCT applications is eligible. Divisional applications based on originally filed applications that qualify under scenarios (i) or (iii) may also be eligible.
However, if the application is a PCT national phase application, the International Search Authority (ISA) and International Preliminary Examination Authority (IPEA) that issue international work product, namely the Written Opinion or the International Preliminary Examination Report (IPER), must be limited to the JPO or USPTO only.
(2) At least one corresponding application exists in the JPO or USPTO, and has one or more claims that are determined to be patentable/allowable by the JPO or USPTO.
(3) All claims in the SIPO application, as originally filed or as amended, must sufficiently correspond to one or more of those claims determined to be patentable or allowable in the JPO or USPTO.
(4) The applicant must have received a Notice of Publication from the SIPO before or when filing the PPH request.
(5) The SIPO application must have entered the substantive examination stage before or when the PPH request is filed.
(6) The SIPO has not begun examination. In other words, the applicant has not received any office action from the SIPO, before or when filing the PPH request.
(7) The SIPO application must be filed electronically when the PPH request is filed on or after March 1, 2012.
In order to make claims in the SIPO application correspond to the claims determined to be patentable/allowable in the JPO or USPTO, the applicant who requests accelerated examination under one of the above PPH pilots must be cautious of the timing for a voluntary amendment. For a voluntary amendment to an invention patent application, including the amendment of claims, the only available timing will be as follows:
(1) when a request for substantive examination is made, and
(2) within three months after the receipt of the notice from the SIPO for entering into substantive examination.
The commencement of the two PPH pilot programs represents the growing bilateral cooperation between the SIPO and major patent offices. It is anticipated that the SIPO will commence its third patent work-sharing initiative with the Korean Intellectual Property Office (KIPO) in March of 2012.
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