Procedures to ile - PDF document

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Procedures to ile The pilot period of this PPH pilot program will commence on1 April, 20for durationof threeyears and ending on31 March, 202The pilot period may

3 be extended if necessary until the CNIPA
be extended if necessary until the CNIPAand PPH using the work products from the Applicants can request accelerated examination by a prescribed procedure including submission of relevant documents on an application which is filed with the CNIPA 1. Requirements (a)CNIPA application(s) without priority claim(examples are provided in ANNEX Iigure, andThe CNIPAapplication, which validly claims priority to multiple NIPOor direct PCT applications, or which is the divisional application validly based on the originally filed 2 application that is included in (i) to (iii) above, is also eligible.(b) At least one corresponding application exists in the NIPOwhichhas one or more claims that are determined to be patentable/allowableby theNIPOThe corresponding application(s) can be the application which forms the basis of the priority claim, an application which derived from the NIPOapplication which forms the basis of the priority claim (e.g., a divisional application of the NIPOapplication or an application which claimspriority to the NIPOapplication (see Fig

4 ure Cin Annex I)), or aNIPOregionalphase
ure Cin Annex I)), or aNIPOregionalphase application of a PCT application (see Figures H, I, J, K and L in Annex I).aims are “determined to be allowable/patentable” when the NIPOexaminer explicitly identified the claims to be allowable/patentablein the latestoffice action, even if the application has not beengranted yet.Office actions mentioned above are"Godkjenning til meddelelse" (Decision to Grant), “Uttalelse” or “Realitetsuttalelse” (Office action).(c) All claims in the CNIPAapplication (for which an accelerated examination under the PPH pilot program is requested)as originally filed or as amendedmust sufficiently correspond to one or more of those claims determinedto be patentable/allowablein the NIPOClaims are considered to “sufficiently correspond” where, aside fromdifferences due to translations and claim format, the claims in the CNIPAapplication are of the same or similar scope as the claims in the NIPOapplication, or the claims in the CNIPAare narrower in scope than the claims in the NIPOIn this regard, a cl

5 aim that is narrower in scope occurs whe
aim that is narrower in scope occurs when NIPOclaim is amended to be further limited by an additional technical feature that is supported in the specification (description and/or claims). A claim in the CNIPAwhich introduces a new/different category of claims to those claims determined to be patentable/allowablein the NIPOis not considered to sufficiently correspond. For example, if the NIPOclaims only contain claims to a process of manufacturing a product, then the claims in the CNIPAare not considered to sufficiently correspond if the CNIPAclaims introduce product claims that are dependent on the corresponding process claims.It is not necessary to include “all” claims determined to be patentable/allowable in the NIPOin an application in the CNIPA(the deletion of claims is allowable). For example, in the case where an application in the NIPOcontains 5 claims determined to be patentable/allowable, the application in the CNIPAmay contain only 3 of these 5 claims. 3 Any claims amended or added after the grant of the request for participation in

6 the PPH pilot program but before the CNI
the PPH pilot program but before the CNIPAfirst office action must sufficiently correspond to the claims indicated as patentable/allowable in the NIPOapplicationAny claims amended or added after the first CNIPAoffice action need not to sufficiently correspond to the claims indicated as patentable/allowable the NIPOwhen applicants need to amend claims in order to overcome the reasonfor refusal raised by CNIPAexaminersAny amendment outside of the claim correspondence requirement is subject to examinersdiscretion.Note that any applicant to the CNIPAmay amend the application including its claims on its or his own initiative when a request for substantive examination is made, and within the time limit of three months after the receipt of the Notice of Invention Patent Application Entering into Substantive Examination Stage. Therefore, an applicant needs to observethe time limit of amendment in order to make claims in the CNIPAapplication correspond to the claims determined to be patentable/allowable in the NIPO(d)The CNIPAapplication must have been published.he app

7 licant must have receiveNotice of Public
licant must have receiveNotice of Publication of Invention Patent Applicationissued from the CNIPAbefore, or at the time offiling the PPH request.(e)The CNIPAapplication must have entered into substantive examination stage.The applicant must have received the Notice of Invention Patent Application Entering into SustativeExamination Stageissued from the CNIPAbefore, or at the time offiling the PPH request.Note that as an exception, the applicant may file a PPH request simultaneously with the Request for Substantive Examination.The CNIPAhas not begun examination of the applicationat the time of filing the PPH requesthe applicant shouldnot have received any office action issued from the substantive examination departments in the CNIPAbefore, or at thetime offiling the PPH request(g)The CNIPAapplication must be electronicpatent application.The applicant must convert the paperbased CNIPAapplication into electronic applicationbefore filing the PPH request. 2. Documents to be submitted Documents (a) to () below must be submitted by attaching to Request for Participat

8 ion in the Patent Prosecution Highway(PP
ion in the Patent Prosecution Highway(PPH)Pilot Program 4 Note that even when it is not needed to submit certain documentbelow, the name of the documents must be listed inRequest for Participation in the Patent Prosecution Highway (PPH) Pilot Program” (Please refer to the xample formbelow for the detail(a)Copies of all office actions(which are relevant to substantial examination for patentabilityin the NIPOwhich were issuedfor the corresponding application by the NIPO, and translations thereofEither Chineseor English acceptable as translation language.Machine translation willbe admissible. If it is impossible for the examiner to understand the translated office actiondue to insufficient translation, the examiner can request the applicant to resubmittranslations.(b)Copies of all claims determined to be patentable/allowableby the NIPO, and translations thereofEither Chineseor English acceptable as translation languagef it is impossible for the examiner to understand the translated claims, the examiner can request the applicant to resubmit translation

9 s.(c)Copies of references cited bytheNIP
s.(c)Copies of references cited bytheNIPOexaminerThe documents to be submitted are those cited in the abovementioned office actions.Documents which are only referred to as references and consequently do not constitutereason forrefusal do not have to be submitted.If the references are patent documents, the applicant does nothave to submit them. When the CNIPAdoes not possess the patent document, the applicant has to submit the patent document at the examiner’s request. Nonpatent literature must always be submitted.The translations of the references are unnecessary.When the applicant has already submitted above documents (a) to () to the CNIPAthrough simultaneous or past procedures, the applicant may incorporate the documents by reference and does not have to attach them . Example of Request for Participation in the Patent Prosecution Highway (PPH)Pilot Programfor filing request of an accelerated examination under the pilot program Note that even when it is not needed to submit copies of references, the name of the

10 referencesmust be listed in the “R
referencesmust be listed in the “Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program”. 5 (a)CircumstancesWhen an applicant files a request for an accelerated examination under the PPH ilot rogram to the CNIPAtheapplicant must submit a request form “Request for articipation in the Patent Prosecution Highway(PPH)Pilot ProgramThe applicant must indicate that the application is included in (i) to (iii) of (a)that accelerated examination is requested under the PPH pilot program. he application number, publication number, or a patent number of the corresponding NIPOapplication(s) mustalsoindicatedWherethe application withone or more claims determined to be patentable/allowable is different from the NIPOapplication(s)included in (i) to (iii) of (a) (for example, the divisional application of the basic application), the application number, publication number, or a patent number of the application(s) which has claims determined to be patentable/allowableand the relationship between those applications must also explaine

11 d.(b)Documents to be submittedThe applic
d.(b)Documents to be submittedThe applicant must list all required documents mentionedin pointabove in an identifiable way, even when the applicant is exemptedfromsubmittingcertain documents.(c)Claim correspondence The applicant requesting PPH must indicatesection D ofthe Request for Participation in the Patent Prosecution Highway (PPH) Pilot Programhow all claims in the CNIPAapplication sufficiently correspond to the patentable/allowableclaims in the NIPOapplication.When claims are just literal translations of each other, the applicant can just enter“they are the same” in the table. When claims are not just literal translation, it is necessary to explain the sufficient correspondence of each claimbased on the criteria 1(c) (Please refer to the ample formbelow(d)NoticeAn applicant can file the Request for articipation in the Patent Prosecution Highway(PPH) PilotProgramto the CNIPAthrough line procedureonly . Procedure for the accelerated examination under the PPHpilot program The CNIPAdecides whether the application can be entitled to the status for

12 an accelerated examination under the PPH
an accelerated examination under the PPH when it receives a request with the documents stated above. When 6 the NIPAdecides that the request is acceptable, the application is assigned a special status for an accelerated examination under the PPH.In those instances where the request does not meet all the requirements set forth above, the applicant will be notified and the defects in the request will be identified. The applicant may be given opportunity, one time only,to correct certain specified defects. If the request is not approved, the applicant may resubmit the requestup to one time. If the resubmitted request is still not approved, the applicant will be notified and the application will await action in its regular turn. 7 Sample Form 专利审查 高速路（ P偈 项目请求 Request for participation in the Patent Prosecution HighwayPPHPilot Program (Sample Form) A. 著录数据 B. 申请人请求参与专利审查高速路（ P偈 ）试点项目基于： OEE / WOIPER OEE OEE C. 文件提交 I OEE å·¥ä½

13 œç»“果及其所需译文 1. OEE
œç»“果及其所需译文 1. OEE PATENTSCOPE 2 1 PATENTSCOPE 认定为可授权的所有权利要求的副本及其所需译文 OEE PATENTSCOPE 4 3 PATENTSCOPE 䥉I 佅E 工作结果引用的文件 OEE 已提交文件 ______CN________________ PPH 8 D. 权利要求对应性 本申请的所有权利要求与 佅E 申请中可授权的权利要求充分对应 在下表中解释权利要求对应性 OEE E. 说明事项 1. OEE a. OEE______;1) ________________2) _________2. OEE 1) ________2) ________3. 9 A NNEX I NIPO application Patentable/Allowable CNIPA application Request for PPH A A case meeting requirement (- Priority claim OK

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NIPO application Patentable/Allowable PCT application Request for PPH B A case meeting requirement (- Priority Claim OK CNIPA DO application .. DO 10 NIPO application Patentable/Allowable CNIPA application Request for PPH C A case meeting requirement (- Priority claim Priority claim OK NIPO application NIPO application Patentable/Allowable CNIPA application Request for PPH D A case not meeting requirement (- Priority claim NG XX application Priority claim XX: 11 NIPO application Patentable PCT application Request for PPH E A case not meeting requirement (- Priority claim NG CNIPA DO application ... XX application

15 Priority claim XX NIPO application
Priority claim XX NIPO application ZZ application CNIPA application Request for PPH F A case meeting requirement (- Priority claim OK Patentable Priority claim ZZ (The first application is fromthe NIPO 12 NIPO application CNIPA application CNIPA application Request for PPH G A case meeting requirement (a) (i)- Paris route & divisional application - Priority claim OK Patentable/Allowable Divisional Patentable/ PCT application Request for PPH H A case meeting requirement - OK NIPO DO application CNIPA DO application . . . NIPO application Priority claim 13 Patentable/Allowable PCT application Request for PPH I A case meeting requirement - route OK NIPO DO application CNIPA DO application ... .. No p Patentable PCT application Request for PPH J A case meeting requirement -& OK NIPO DO application CNIPA application ... No p Priority claim 14 Request for PPH PCT application Patentable/Allowable K A case meeting requirement (a) (iii)- Direct PCT & PCT route - OK NIPO DO application ... No priority claim Priority claim PCT

16 application CNIPA DO application ...
application CNIPA DO application ... Patentable/ PCT application Request for PPH L A case meeting requirement -& OK CNIPA DO application No p Priority claim PCT application NIPO DO application . . . . . . 15 Patentable/ NIPO application Request for PPH M A case not meeting requirement -- NG Priority claim CNIPA application First Office Action () Patentable NIPO Application Request for PPH N A case not meeting requirement -request for PPH NG Priority Claim CNIPA Application Publication 16 Patentable NIPO Application Request for PPH O A case not meeting requirement -examination stage at the time of request for PPH - NG Priority Claim CNIPA Application Request for Substantive Examination Notice of Invention Patent Application Entering into Substantive Examination Stage Patentable NIPO Application Request for PPH P A case meeting requirement -Examination - OK Priority Claim CNIPA Application Publication Notice of Invention Patent Application Entering into Substantive Examination Stage Request for Substantive Examination Simu