China implemented a Patent Prosecution Highway program to expedite examination of invention patent applications in December 2011. In the year of 2016, (the year for which most recent data is available) the China State Intellectual Property Office had received 5,274 requests for expedited examination via the PPH program, among which 1,904 were filed by U.S. applicants and second only to Japanese Patent Office (JPO)[1]. We believe the number of requests will keep growing as USPTO is examining applications faster, which means faster grants and therefore more Applicants will be eligible to take advantage of the PPH in China.

Benefits of PPH

Time Saving

PPH participation can reduce examination time by more than half. According to the SIPO, the average amount of time from an applicant filing a request for PPH to a final decision (i.e., allowance or rejection) is 11.9 months per invention application[2]. By contrast, it takes 22.0 months[3] from filing a request for examination for SIPO to examine an invention application under normal procedures. Moreover, under expedited examination, an applicant will be able to receive the first office action in around 2.7[4] months after the PPH request was made, compared to about 12.5 months[5] from requesting substantive examination for an application without expedited examination.

Cost Saving

The PPH will potentially reduce costs by minimizing applicants’ attorneys’ fees by reducing the number of office actions and therefore the associated cost to translate and respond to same. The average number of office actions SIPO issues for each invention application under the PPH program is only 1[6], i.e., grant after a single office action.

High Grant Rates

The average allowance rate for foreign invention applications is 76.1 percent[7], while that rate is increased to 87.8 percent[8] for the invention applications that are examined under the PPH program.

The PPH program minimizes duplication of work for patent offices and enhances examination efficiency and quality.

It should be noted that PPH request can be declined by the SIPO because of formality issues or for claims lacking sufficient correspondence.

The Keys to a Successful PPH Petition

Right Timing

A request to participate in the PPH shall be made after the Chinese application is published. A PPH petition can be filed when filing a request for exam, or after the Chinese application has entered into substantive examination (i.e., received a notice of entering substantive examination). And the request shall be filed before SIPO issues the first office action. Applicants automatically lose the right to participate in the PPH program once SIPO issues any substantive examination office actions for the Chinese application.

Claims Correspondence

All claims in the Chinese application must sufficiently correspond to the patentable claims in the foreign or the Patent Cooperation Treaty application (i.e., the Chinese claims must be similar in the scope or narrower than the allowed claims).

Note that applicants are entitled to two chances to amend the Chinese application based on applicants’ initiative during the prosecution, namely (1) when making the substantive examination request and (2) within three months since receiving the notice of entering the substantive examination. For Chinese national phase entry of a PCT application, there will be one more opportunity, which is when the PCT application enters into China, an amendment can be made under PCT Article 28/41. The applicant should use these opportunities of voluntary amendment to amend the Chinese application to correspond to the patentable claims of foreign or PCT application.

Accordingly, this is a key limitation on PPH eligibility. If the timing of a corresponding allowance in the U.S. patent application is after the deadline to file a voluntary amendment to amend claims to match the allowed claims, the Chinese application may not have claim correspondence and SIPO will deny the request to participate in the PPH program. Alternatively, applicant may want to file a divisional for their Chinese patent application to match the later allowed claims of the US counterpart.

Accordingly, applicants may want to delay examination of their Chinese patent applications by waiting to file a request for examination until the final deadline of 36 months from the earliest priority date. Alternatively, applicants may want to request prioritized examination of their U.S. applications at filing, especially for patents assigned to Tech Centers 2100 (Computer Architecture, Software & Information Security) and Tech Center 3700 (Mechanical Engineering, Manufacturing and Products)[9], which tend to have the longest pendencies at the U.S. Patent and Trademark Office.

Application Relevance

The PPH requests in China can be categorized into three circumstances: Normal PPH, PCT-PPH and extended IP5-PPH. Normal PPH requires that the Chinese application claims priority to a foreign application directly via the Paris Convention, and use the work product of that foreign application to expedite examination of the Chinese application. Note if the foreign priority is a U.S. application, the PPH request can be made based on a continuation of that U.S. application as long as the continuation claims priority or priority chain to the original U.S. application.

Normal PPH also includes when the Chinese application claims priority to a foreign application indirectly via PCT application. For instance, a PCT application claims priority to a U.S. application and later the PCT application entered in China as a national phase application. Applicant can participate in the PPH program based on the notice of allowance of the U.S. application. Furthermore, SIPO allows national phase entry application’s PPH request based on other designated office’s work product. For example, if a PCT application claims priority to a Japanese application enters in both U.S. and China, Applicant can file a PPH request in China based on the U.S. national phase examination results.

PCT-PPH requires the Chinese application is a national phase entry of a PCT application. The PCT-PPH request is based on the work product of the International Searching Authority.

The extended IP5-PPH, which is also called PPH Mottainai (which is a Japanese term and literally means wasteful[10]) has two exceptions compared with Normal PPH and PCT-PPH.  Firstly, IP5-PPH eliminates the restriction that the office which provides the examination results is the Office of First Filing (OFF).  In other words, if a foreign application claims a priority from a Chinese application (SIPO is the OFF) and the foreign application is allowed first, the Chinese application can use the work product of the foreign application to expediate prosecution.  Secondly, the IP5-PPH eliminates the restriction of direct priority chain between a first foreign application of OFF and Chinese application with SIPO as the Office of Later Examination (OLE).  In other words, the office which provides the examination result is not the OFF, instead it can be the office whose second foreign application also claims priority from the first foreign application of the OFF.


The application must include an indication of patentability of at least one claim in a notice of allowance or an office action, or the PCT application must indicate patentability in a PCT work product (i.e., written opinion of the International Searching Authority or International Preliminary Examination Report). Note, for PCT-PPH requests based on the written opinion, if Box VIII -certain observations on the international application is checked (e.g., technical features in the claims are not followed with reference signs placed in parentheses), SIPO will deny that PPH request with no recourse.

In addition to a request to participate in the PPH, the applicants must submit (1) Chinese translations of the allowable claims of the relevant foreign application, (2) list of references cited by the examiner, (3) copies of nonpatent literature references cited by the examiner, (4) a claims correspondence table with explanation; and (5) copies of all office actions that are relevant to substantive examination for patentability. The applicant also should submit Chinese translations of all office actions if the documents are not written in English.

[1] Source: World Intellectual Property Indicators – 2017

[2] Source:

[3] Source:

[4] Source:


[6] Id.

[7] Source: Data were disclosed at the Patent Prosecution Highway promotion seminar on July 16, 2015, in Beijing

[8] Id.

[9] Source:

[10] Source: