Patent Prosecution Highway Views from the SIPO. Yuan JIN Patent Affair Administration Department 2012 Tokyo

Transcription

1 Patent Prosecution Highway Views from the SIPO Yuan JIN Patent Affair Administration Department 2012 Tokyo 1

2 Overview SIPO S PPH Pilot Agreements Main Requirements for using PPH PPH Statistics of the SIPO SIPO S PPH Future Plan Further Information 2

3 SIPO S PPH Pilot Agreements JPO:1 November 2011 for duration of one year (including PCT PPH) USPTO: 1 December 2011 for duration of one year (including PCT PPH) DPMA: 23 January 2012 for duration of two years KIPO: 1 March 2012 for duration of one year (including PCT PPH) 3

4 Overview SIPO S PPH Pilot Agreements Main Requirements for using PPH PPH Statistics of the SIPO SIPO S PPH Future Plan Further Information 4

5 Main Requirements for using PPH Conventional PPH 1. SIPO Application type 2. patentable claims in JPO 3. Sufficiently correspond 4. Have been published (i) Claims JPO application(s) priority application Text Text scope Text as the Text (ii) PCT national phase application without priority claim (iii) Claims PCT application(s) priority Divisional application whose original filled application satisfies (i) to (iii) at least one exists in the JPO At least one claim is found to be patentable same or similar claims in the JPO narrower in scope than the claims in the JPO New/Different Category (NG) applicant must have received Notice of Publication issued from SIPO 5

6 Main Requirements Conventional PPH 5. Entered into substantive examination 6. SIPO has not begun examination 7. E-filing application on or after March 1,2012 (PPH request filing date) have received the Notice of Entering into Substantive Examination Stage before or on the filing date Text Text OA from substantive Text Simultaneously with the request for substantive Examination (exception) have not received any examination department If the application is in paper form, it should be transferred into e- filing before filing the PPH Request 6

7 Main Requirements patentable claim(s) in the international work product (VIII) Application relationship PCT-PPH PPH Sufficiently correspond Have been published Entered into substantive examination Have not been examined E-filing application on or after March 1,2012 7

8 Main Requirements (A) SIPO DO application of a corresponding PCT application Application relationship (B) SIPO conventional application as a basis of priority of corresponding PCT application (C) SIPO DO application claiming priority of correspondin g PCT application (D) SIPO conventional application application claiming claiming priority priority of of corresponding PCT g application PCT application (E) Derivative application of an application satisfying one (A)-(D) of (A)-(D) 8

9 Document to be submitted besides PPH request form OA(s) Claims Copy of all/latest(pct) OAs issued by JPO and their Chinese or English translation Copy of all claims determined to be patentable and their Chinese or English translation Cited Copy of Reference Cited by the JPO examiner/international work product Table Copy claims of correspondence cited documents table appeared indicates how in the all latest claims OAsufficiently correspond to the claims indicated to be patentable 9

10 Accelerated Examination procedure under PPH pilot PPH Request Assign a status for acceleration Get into accelerated examination procedure approved Not approved Notification with defects identified be given one chance to correct defects resubmit PPH request for one time 10

11 Overview SIPO S PPH Pilot Agreements Main Requirements for using PPH PPH Statistics of the SIPO Moving Forward Further Information 11

12 Number of PPH filings (end of Jan. 2012) Conventional PPH PCT PPH OFF OSF Number OFF OSF Number JPO 100 JPO 12 USPTO 81 USPTO 0 DPMA 0 12

13 Submit in the form of Paper or E filing Nov.2011 Dec.2011 Jan.2012 paper e-filing 13

14 Overview SIPO S PPH Pilot Agreements Main Requirements for using PPH PPH Statistics of the SIPO SIPO S PPH Future Plan Further Information 14

15 SIPO S PPH Future Plan Increase awareness of the PPH, in China and abroad User seminar Improved access to PPH information PPH portal: portal/index.htm 15

16 Overview SIPO S PPH Pilot Agreements Main Requirements for using PPH PPH Statistics of the SIPO Moving forward Further Information 16

17 Further information SIPO PPH websites Notification Guidelines and request forms FAQs Relevant websites 17

18 Thank you! 18