China National Intellectual Property Administration Patent Prosecution Highway

China National Intellectual Property Administration Patent Prosecution Highway

The IPONZ-CNIPA PPH programme lets you request expedited examination with IPONZ if one or more claims in your patent application have been found to be patentable by the CNIPA.

The IPONZ-CNIPA Patent Prosecution Highway (PPH) pilot programme is an arrangement between IPONZ and the China National Intellectual Property Administration (CNIPA). It allows patent applicants to request expedited examination in either office if at least one of the claims in a corresponding application has been found patentable.

This expedited examination means that we will examine your patent application earlier than our normal timeframes.

Timeframes

Your patent application must meet certain requirements before we can accept your request under the IPONZ-CNIPA PPH.

If your application does not meet the requirements under this PPH, you can also request that we expedite the examination of your patent application under provisions in the Patents Regulations 2014 or via another PPH programme.

Expedited examination for patent applications

How to file a request for expedited examination under the IPONZ-CNIPA PPH

Before you file a request for expedited examination under the IPONZ-CNIPA PPH (“a CNIPA PPH request”), you must check that your request meets the eligibility criteria for expedited examination under the IPONZ-CNIPA PPH, and that you have the required documents.

Eligibility criteria

Filing requirements

If you would like to request expedited examination under the IPONZ-CNIPA PPH, you must enter your request via the IPONZ case management facility.

  • You can enter a CNIPA PPH request at either of the following times:
    • At the point when you file your patent application.
    • After you have filed your patent application, by requesting an amendment under Maintain a Patent.
  • To submit your request, tick the Request expedited examination under a Patent Prosecution Highway (PPH) box, then select IPONZ-CNIPA PPH in your application or amendment form. This will prompt you to provide additional details and upload your supporting documentation.

If you have not yet requested examination for your patent application, entering a CNIPA PPH request will automatically request its examination, and you will be charged the corresponding examination fee.

If you are entering a CNIPA PPH request for a Treaty application, please note we cannot add your application to our examination queue before its eligibility date. If you intend for your application to be examined before its eligibility date, you will need to make a separate request for this.

Relevant dates for examination in New Zealand

Eligibility criteria 

To be eligible for expedited examination under the IPONZ-CNIPA PPH, your application must meet the following conditions:

  • The application to be examined by IPONZ and the corresponding application examined by the CNIPA must have the same earliest date (which may be the priority date or the filing date). 
  • At least one claim in the CNIPA application must have been found to be patentable by the CNIPA. That is – it must have been found to be novel, inventive and useful / industrially applicable. There must be an express statement of patentability for these claim(s) in a work product issued by the CNIPA.

Filing requirements

In order for your CNIPA PPH request to be accepted, all of the claims presented for examination at IPONZ must “sufficiently correspond” to one or more of the claims found patentable by the CNIPA. This may require you to submit a new complete specification document with amended claims as part of your request.

The meaning of “sufficiently correspond”

The following documents are required as part of your CNIPA PPH request:

  • A copy of the work product(s) issued by the CNIPA which expressly identify the patentable claims. More information on what makes up a valid work product can be found below.
  • A copy of the claims that the CNIPA examination has found to be patentable.
  • A claim correspondence table which sets out the patentable claim(s) of the CNIPA application and identifies the "sufficiently corresponding" claim(s) to be examined by IPONZ. In instances where the claims to be examined are identical to those found patentable, a statement to this effect is also acceptable.
  • A complete specification document that includes the claims which “sufficiently correspond” to those found patentable by the CNIPA.

Valid work products

If any of the above documents are not in English, you must provide English copies or translations of these documents.

Translations of the patentable claims should align with the claims submitted to IPONZ. In situations where these do not align, IPONZ may request a verified English translation in order to determine if these claims sufficiently correspond.

Optional documents

You can also provide additional documents with your request, such as a cover letter, documents cited against the corresponding application, non-patent literature cited by the CNIPA, or other materials that relate to the request.

IPONZ may also request copies of citations raised against the earlier application (or translations thereof) if they are not available via regular databases or search files.

The meaning of “sufficiently correspond”

All claims to be examined by IPONZ must “sufficiently correspond” to the patentable claim(s) of the CNIPA application.

Claims to be examined by IPONZ are considered to “sufficiently correspond” if either:

  • The claims are of the same or similar scope to claims indicated as patentable by the CNIPA.
  • The claims are narrower in scope than the claims indicated as patentable by the CNIPA.

Claim(s) to be examined by IPONZ cannot be broader in scope than those found patentable by the CNIPA.

IPONZ will also account for the effects of any translations into the English language if the original claims were not in English.

Different claim categories

Claim(s) which introduce a new or different category of claims to those claims determined to be patentable are not considered to sufficiently correspond. 

For example, if the CNIPA application contains only claims to an article, then claims to be examined by IPONZ that include a method of making the article will not sufficiently correspond.

Amending to claims which sufficiently correspond

You can amend your complete specification to include claims which sufficiently correspond. This can be done before or at the same time you file your CNIPA PPH request.

Please note that a voluntary amendment fee may apply if you make any amendments to your complete specification after you have requested for examination. 

Valid work products

A work product is a formal report or action issued by the CNIPA.

If you file a CNIPA PPH request, your request must include a copy of a work product issued by the CNIPA that expressly identifies the patentable claim(s). Patentable claims must be assessed as novel, inventive and useful / capable of industrial applicability. 

Work products can be any report or action issued by the CNIPA, as long as the patentable claims are clearly identified.

Written Opinions or International Preliminary Reports on Patentability that are issued by the CNIPA as the International Search Authority or International Examination Authority are also considered valid work products.  

You can include multiple work products from the CNIPA in a single request, provided the applications share the same earliest date.

Relevant dates for examination in New Zealand

Requesting examination of an application prior to examination eligibility 

National phase entry applications under the Patent Cooperation Treaty (also known as ‘Treaty’ applications) are only eligible for examination if at least 31 months have passed since their earliest priority date.

This examination eligibility requirement applies even if you request IPONZ to expedite the examination of your Treaty application under the IPONZ-CNIPA PPH. 

If you intend for IPONZ to examine your Treaty application ahead of its eligibility date, you must request this separately from your CNIPA PPH request:

  • If you are entering a CNIPA PPH request at the point where you are filing your patent application, you will need to first submit your patent application. Once you have completed this, you can request an amendment under Maintain a Patent to indicate you want IPONZ to examine your Treaty application ahead of its eligibility date.
  • If you are entering a CNIPA PPH request as part of an amendment, you can tick the Request examination of a Treaty application prior to examination eligibility box in your amendment form. This will indicate you want IPONZ to examine your Treaty application ahead of its eligibility date.

Late entry into national phase requires restoration

If a Treaty application is filed at IPONZ later than the 31-month national phase entry deadline, a request for expedited examination under the IPONZ-CNIPA PPH cannot be made at the same time.

In this situation, your application will need to be restored before requesting expedited examination under the IPONZ-CNIPA PPH. Please see our restoration guidelines for more information.

Restoration guidelines

Patents Examination Manual, Sections 117-128: Restoration of patents and patent applications

Late convention claims

If a convention application is filed at IPONZ later than the 12 month convention period, you can still make a request for expedited examination under the IPONZ-CNIPA PPH at the time of filing.

However, this request will not be actioned until the Commissioner is satisfied that the convention application is entitled to the claimed priority date.

If a convention claim is not found to be entitled to the claimed priority date, then the request for expedited examination under the IPONZ-CNIPA PPH will be refused as the New Zealand application and the CNIPA application would no longer share the same earliest priority or filing dates.

Processing of requests and timelines

Once IPONZ receives a request for expedited examination under the IPONZ-CNIPA PPH, we will assess the request to determine if:

  • Your application meets the eligibility requirements.
  • Your request meets the filing requirements, including the required documents.

If your application does not meet the eligibility requirements, IPONZ will refuse the request. 

If your application is eligible, but does not meet the filing requirements, you will be given an opportunity to remedy any issues with the request. You must submit your response and/or additional documentation within 10 working days for your request to be considered, otherwise it will be declined. IPONZ may still choose to decline requests that are invalid or do not meet other filing requirements.

If the request meets the eligibility and filing requirements, IPONZ will accept the request.
 
Once a request for expedited examination is accepted, the application will be allocated to an examiner for substantive examination after the examination eligibility date has been reached.

IPONZ reserves the right to limit participation where incoming CNIPA PPH requests exceed resources.

Fees

There is no fee for requesting expedited examination under the IPONZ-CNIPA PPH.

Other fees may still apply, including a fee to request examination, voluntary amendment fees, or fees for excess claims. For more information, please see the Patent fees section of our website.

Patent fees

Using an IPONZ work product to file a PPH request with the CNIPA

You can use an IPONZ work product to request accelerated examination at the CNIPA. 

Patent procedure – China National Intellectual Property Administration

The work product will need to show that at least one claim is patentable (that is - novel, inventive, and useful). Examples of suitable work products from IPONZ include:

  • An examination report which says that one or more claims are patentable in the summary table on page 2.
  • A notice of acceptance. This serves as an explicit statement that all claims are patentable.

The CNIPA has its own eligibility and documentation requirements for PPH requests. Your application may be subject to these requirements.