PPH at EPO: once my Chinese patent is granted by the SIPO in future, can I request a PPH?
Question: “Concerning on the PPH, if my Chinese patent is granted by the SIPO in future, can I still request?”
In response to your email concerning the PPH request, in principle, you may request for the PPH for the above-mentioned European Regional Phase Patent Application based on a Chinese Patent granted by the SIPO.
For the sake of clarity, we provide our detailed guidance for your careful consideration below.
In order to be eligible to participate in the PPH programme at the EPO, the following requirements for the Chinese Patent must be met:
(1) The present European Regional Phase Patent Application must have the same “earliest date” with the Chinese Patent.
The “earliest date” can be either:
(a) the priority date of 03 January 2012, based on the filing date of the UK priority application no. GB 1200012.1, if the Chinese Patent was a national patent examined by the SIPO in accordance to the Paris Convention; or
(b) the filing date of 18 December 2012, based on the filing date of the PCT patent application no. PCT/CN2012/086885, if the Chinese Patent was a national phase patent application from PCT, and the SIPO acted as the International Search Authority (ISA) and/or International Preliminary Examination Authority (IPEA) during the international phase.
(2) The Chinese Patent has at least one claim indicated by the SIPO in its capacity as a national Patent Office, ISA and/or IPEA to be “patentable/allowable”.
The meaning of “patentable/allowable” can be communicated as claim(s) that are determined as novel, inventive and industrially applicable by the ISA and/or IPEA. For SIPO, claims are “determined to be allowable/patentable” when the SIPO examiner explicitly identified the claims to be allowable/patentable in the latest Office Action, even if the Chinese Patent Application is not granted yet. The Office Action includes:
(a) Decision to Grant a Patent,
(b) First/Second/Third/… Office Action,
(c) Decision of Refusal,
(d) Reexamination Decision, and
(e) Invalidation Decision.
Claims are also “determined to be allowable/patentable” in the following circumstances:
If the SIPO office action does not explicitly state that a particular claim is allowable/patentable, the applicant must include explanation accompanying the request for participation in the PPH pilot programme that no rejection has been made in the SIPO office action regarding that claim, and therefore, the claim is deemed to be allowable/patentable by the SIPO. For example, if claims are not shown in the item of “6. the Opinion on the Conclusion of Examination (审查的结论性意见) about Claims (关于权利要求书)” in the “First Notice of the Opinion on Examination (第一次审查意见通知书)” or “5. the Opinion on the Conclusion of Examination about Claims” in the “Second/Third/… Notice of the Opinion on Examination (第二/三/…次审查意见通知书)” of the SIPO, those claims may be deemed to be implicitly identified to be allowable/patentable and then the applicant must include the above explanation.
(3) All claims in the present European Regional Phase Patent Application must sufficiently correspond to the patentable/allowable claims in the Chinese Patent Application.
Claims are considered to sufficiently correspond where, accounting for differences due to claim format requirements, the claims are of the same or a similar scope or the claims in the European Patent application are narrower in scope than the patentable/allowed claims in the Chinese Patent Application. In this regard, a claim that is narrower in scope occurs when a Chinese Patent claim is amended to be further limited by an additional feature that is supported in the specification (description and/or claims).
Additionally, a claim in the European Patent Application which introduces a new/different category of claims than those indicated to be patentable/allowable by the SIPO is not considered to sufficiently correspond. For example, where the Chinese Patent claims only contain claims to a process of manufacturing a product, then the claims in the European Patent Application are not considered to sufficiently correspond if the EPO claims introduce product claims that are dependent on the corresponding process claims. We need to declare that the claims between the European Patent Application and the Chinese Patent Application sufficiently correspond.
(4) Substantive examination of the Regional Phase European Patent Application has not begun before filing the PPH request. The examination starting date is visible for published applications to all in the European Patent Register.
For participation in the PPH programme at the EPO, the applicant has to:
(1) file a request for participation in the PPH pilot programme. The downloadable request forms are either:
(a) the EPA/EPO/OEB 1009 PR (Participation in the Patent Prosecution Highway (PPH) pilot programme between the IP5 Offices on the basis of national work products) http://documents.epo.org/projects/babylon/eponet.nsf/0/53E678849EBFAF28C12574D0003253F3/$File/1009_pr_form_01_14.pdf , or
(b) the EPA/EPO/OEB 1009 PCT (Participation in the Patent Prosecution Highway (PPH) pilot programme between the IP5 Offices on the basis of PCT work products)
(2) file a declaration of claims correspondence;
(3) submit a copy of either
(a) all the Office Actions from the SIPO containing the patentable/allowable claims that are the basis for the PPH request, where applicable, and a translation thereof in one of the EPO official languages (English, French or German); or
(b) the latest work product in the PCT/CN2012/086885, which can be the Written Opinion of the ISA (WO-ISA) or, where a demand under PCT Chapter II has been filed, the Written Opinion of the IPEA (WO-IPEA) or the International Preliminary Examination Report (IPER), where applicable, and a translation thereof in one of the EPO official languages (English, French or German).
(4) submit a copy of the patentable/allowable claim(s) issued by the SIPO and a translation thereof in one of the EPO official languages (English, French or German).
(5) submit copies of all the documents other than patent documents cited in the SIPO Office Action(s) or the PCT work product identified in point (3) above.
Please note that in cases where the Office Action from the SIPO does not explicitly identify claims that are patentable/allowable, the applicant must also submit an explanation which individual claims are patentable/allowable and how these claims are delimited over the cited prior art.
When the statutory and filing requirements set forth above are met, the request for participation in the PPH pilot programme will be granted and the European Regional Phase Patent Application will be processed in an accelerated manner. In those instances where the request for participation in the PPH pilot programme does not meet all the requirements set forth above, we will be notified and the defects in the request will be identified. We will be given one opportunity to correct formal deficiencies identified in the request. If the request is not corrected, the application will be taken out of the PPH pilot programme and we will be notified.