Procedures to File a Request to the CNIPA (China National
Intellectual Property Administration) for Patent Prosecution
Highway Pilot Program between the CNIPA and the SAIP (SaudiAuthority for Intellectual Property)
The pilot period of this PPH pilot program will commence on 1 November, 2020 for duration of
three years and ending on 31 October, 2023. The pilot period may be extended if necessary until
the CNIPA and SAIP receive sufficient number of PPH requests to adequately assess thefeasibility of PPH program.
The Offices may also terminate the PPH pilot program if the volume of participation exceeds
manageable level, or for any other reason. Ex Ante notice will be published if the PPH pilot
program is terminated.

PPH using the work products from the SAIP
Applicants can request accelerated examination by a prescribed procedure including submissionof relevant documents on an application which is filed with the CNIPA and satisfies the following
requirements under the CNIPA-SAIP Patent Prosecution Highway (PPH) pilot program based on
the SAIP application.
When filing a request for the PPH pilot program, an applicant must submit a request form “Requestfor Participation in the Patent Prosecution Highway (PPH) Pilot Program” [PPH request] to theCNIPA.

1. Requirements(a)

The CNIPA application (including PCT national phase application) is(i) an application which validly claims priority under the Paris Convention to the SAIP
application(s) (examples are provided in ANNEX I, Figures A, B, C, F, G and H), or(ii) a PCT national phase application without priority claim (an example is provided inAnnex I, Figures I), or(iii) an application which validly claims priority under the Paris Convention to the PCTapplication(s) without priority claim (examples are provided in ANNEX I, Figures J,K and L).
The CNIPA application, which validly claims priority to multiple SAIP or direct PCT
applications, or which is the divisional application validly based on the originally filed
1

application that is included in (i) to (iii) above, is also eligible.
(b) At least one corresponding application exists in the SAIP which has one or moreclaims that are determined to be patentable/allowable by the SAIP.
The corresponding application(s) can be the application which forms the basis of the priorityclaim, an application which derived from the SAIP application which forms the basis of thepriority claim (e.g., a divisional application of the SAIP application or an application whichclaims priority to the SAIP application (see Figure C in Annex I)), or an
SAIP regional phase application of a PCT application (see Figures H, I, J, K and L inAnnex I).
Claims are “determined to be allowable/patentable” when the SAIP examiner explicitly
identified the claims to be “allowable/patentable” in the latest office action, even if theapplication has not been granted yet.
Office actions mentioned above are:(1) Decision to Grant a Patent(2) Notification of Reasons for Refusal(3) Appeal Decision.
(c) All claims in the CNIPA application (for which an accelerated examination under thePPH pilot program is requested), as originally filed or as amended, must sufficiently
correspond to one or more of those claims determined to be patentable/allowable in
the SAIP.
Claims are considered to “sufficiently correspond” where, aside from differences due totranslations and claim format, the claims in the CNIPA application are of the same orsimilar scope as the claims in the SAIP application, or the claims in the CNIPA are
narrower in scope than the claims in the SAIP.
In this regard, a claim that is narrower in scope occurs when SAIP claim is amended to befurther limited by an additional technical feature that is supported in the specification(description and/or claims).
A claim in the CNIPA which introduces a new/different category of claims to those claims
determined to be patentable/allowable in the SAIP is not considered to sufficiently
correspond. For example, if the SAIP claims only contain claims to a process ofmanufacturing a product, then the claims in the CNIPA are not considered to sufficiently
correspond if the CNIPA claims introduce product claims that are dependent on thecorresponding process claims.
It is not necessary to include “all” claims determined to be patentable/allowable in the SAIP
in an application in the CNIPA (the deletion of claims is allowable). For example, in thecase where an application in the SAIP contains 5 claims determined to be2

patentable/allowable, the application in the CNIPA may contain only 3 of these 5 claims.
Any claims amended or added after the grant of the request for participation in the PPH
pilot program but before the CNIPA first office action must sufficiently correspond to theclaims indicated as patentable/allowable in the SAIP application. Any claims amended oradded after the first CNIPA office action need not to sufficiently correspond to the claims
indicated as patentable/allowable by the SAIP when applicants need to amend claims inorder to overcome the reasons for refusal raised by CNIPA examiners. Any amendment
outside of the claim correspondence requirement is subject to examiners’ discretion.
Note that any applicant to the CNIPA may amend the application including its claims on its
or his own initiative when a request for substantive examination is made, and within thetime limit of three months after the receipt of the Notice of Invention Patent Application
Entering into Substantive Examination Stage. Therefore, an applicant needs to observe
the time limit of amendment in order to make claims in the CNIPA application correspondto the claims determined to be patentable/allowable in the SAIP.
(d)The CNIPA application must have been published.
The applicant must have received the Notice of Publication of Invention Patent Application
issued from the CNIPA before, or at the time of filing the PPH request.

(e)

The CNIPA application must have entered into substantive examination stage.
The applicant must have received the Notice of Invention Patent Application Entering into
Substantive Examination Stage issued from the CNIPA before, or at the time of filing thePPH request.
Note that as an exception, the applicant may file a PPH request simultaneously with theRequest for Substantive Examination.

(f)

The CNIPA has not begun examination of the application at the time of filing the PPH
request.
The applicant should not have received any office action issued from the substantive
examination departments in the CNIPA before, or at the time of filing the PPH request.

(g)

The CNIPA application must be electronic patent application.
The applicant must convert the paper-based CNIPA application into electronic application
before filing the PPH request.

2. Documents to be submitted
Documents (a) to (c) below must be submitted by attaching to “Request for Participation in3the Patent Prosecution Highway (PPH) Pilot Program”.
Note that even when it is not needed to submit certain documents below, the name of thedocuments must be listed in the “Request for Participation in the Patent Prosecution
Highway (PPH) Pilot Program” (Please refer to the example form below for the details).
(a)Copies of all office actions (which are relevant to substantial examination forpatentability in the SAIP) which were issued for the corresponding application by
the SAIP, and translations thereof.
Either Chinese or English is acceptable as translation language. Machine translation will
be admissible. If it is impossible for the examiner to understand the translated office action
due to insufficient translation, the examiner can request the applicant to resubmit
translations.

(b)

Copies of all claims determined to be patentable/allowable by the SAIP, andtranslations thereof.
Either Chinese or English is acceptable as translation language. If it is impossible for theexaminer to understand the translated claims, the examiner can request the applicant toresubmit translations.

(c)Copies of references cited by the SAIP examiner
The documents to be submitted are those cited in the above-mentioned office actions.
Documents which are only referred to as references and consequently do not constitutereason for refusal do not have to be submitted.
If the references are patent documents, the applicant does not have to submit them1.
When the CNIPA does not possess the patent document, the applicant has to submit thepatent document at the examiner’s request. Non-patent literature must always besubmitted. The translations of the references are unnecessary.
When the applicant has already submitted above documents (a) to (c) to the CNIPA
through simultaneous or past procedures, the applicant may incorporate the documents byreference and does not have to attach them.

3. Example of “Request for Participation in the Patent Prosecution Highway(PPH) Pilot Program” for filing request of an accelerated examination under the1

Note that even when it is not needed to submit copies of references, the name of the references must be listed inthe “Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program”.

4

PPH pilot program(a)

Circumstances
When an applicant files a request for an accelerated examination under the PPH pilot
program to the CNIPA, the applicant must submit a request form “Request for Participationin the Patent Prosecution Highway (PPH) Pilot Program”.
The applicant must indicate that the application is included in (i) to (iii) of 1. (a), and that
accelerated examination is requested under the PPH pilot program. The application
number, publication number, or a patent number of the corresponding SAIP application(s)must also be indicated.
Where the application with one or more claims determined to be patentable/allowable isdifferent from the SAIP application(s) included in (i) to (iii) of 1. (a) (for example, thedivisional application of the basic application), the application number, publication number,or a patent number of the application(s) which has claims determined to bepatentable/allowable and the relationship between those applications must also beexplained.

(b)

Documents to be submitted
The applicant must list all required documents mentioned in point 2. above in an
identifiable way, even when the applicant is exempted from submitting certain documents.

(c)

Claim correspondence
The applicant requesting PPH must indicate in section D of the “Request for Participationin the Patent Prosecution Highway (PPH) Pilot Program” how all claims in the CNIPA
application sufficiently correspond to the patentable/allowable claims in the SAIP
application.
When claims are just literal translations of each other, the applicant can just enter “they arethe same” in the table. When claims are not just literal translations, it is necessary toexplain the sufficient correspondence of each claim based on the criteria 1.(c) (Pleaserefer to the sample form below).

(d)

NoticeAn applicant can file the “Request for Participation in the Patent Prosecution Highway(PPH) Pilot Program” to the CNIPA through on-line procedures only.

4. Procedure for the accelerated examination under the PPH pilot program
The CNIPA decides whether the application can be entitled to the status for an accelerated
5

examination under the PPH when it receives a request with the documents stated above. Whenthe CNIPA decides that the request is acceptable, the application is assigned a special status foran accelerated examination under the PPH.
In those instances where the request does not meet all the requirements set forth above, theapplicant will be notified and the defects in the request will be identified. The applicant may begiven opportunity, one time only, to correct certain specified defects. If the request is not approved,
the applicant may resubmit the request up to one time. If the resubmitted request is still notapproved, the applicant will be notified and the application will await action in its regular turn.

6Sample Form

参与专利审查高速路（PPH）试点项目请求表

PPH

Request for participation in the Patent Prosecution Highway (PPH) Pilot Program (Sample Form)

A. 著录数据申请号
B. 请求申请人请求参与专利审查高速路（PPH）试点项目基于：在先审查局 (OEE)OEE 工作结果类型□ 国家/地区的审查意见□ WO-ISA，WO-IPEA 或 IPEROEE 申请号
本申请与 OEE 申请的关系
C. 文件提交第I栏

OEE 工作结果及其所需译文

1.

□ 提交了 OEE 工作结果的副本□ 请求通过案卷访问系统或 PATENTSCOPE 获取上述文件□ 提交了 1 之所述文件的译文

2．

□ 请求通过案卷访问系统或 PATENTSCOPE 获取上述文件
第 II 栏OEE 认定为可授权的所有权利要求的副本及其所需译文

3．

□ 提交了 OEE 认定为可授权的所有权利要求的副本□ 请求通过案卷访问系统或 PATENTSCOPE 获取上述文件

4．

□ 提交了 3 之所述文件的译文□ 请求通过案卷访问系统或 PATENTSCOPE 获取上述文件

第 III 栏5．

OEE 工作结果引用的文件□ 提交了 OEE 工作结果引用的所有文件的副本（专利文献除外）□ 无引用文件

第 IV 栏已提交文件

6.

□ 若上述某些文件已经提交，请予说明：
申请人于__年__月__日在 CN________中提交了________文件

7D. 权利要求对应性□ 本申请的所有权利要求与 OEE 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
本申请的权利要求对应的 OEE 权利要求关于对应性的解释

E. 说明事项
1. OEE 工作结果的副本名称如下：a. OEE 申请______;
1) 由__于__年__月__日作出的________
2) 由__于__年__月__日作出的________
2. OEE 工作结果引用的文件的副本名称如下：
1) ________
2) ________
3. 特殊项的解释说明：申请人或其代理人

日期

8ANNEX I

B

A case meeting requirement (a) (i)- PCT route -SAIPapplication

Patentable/Allowable

CNIPA DOapplication

PCT application.
.
.

DO: Designated Office9

Request for PPH

10

F

A case meeting requirement (a) (i)- Paris route & complex priority -SAIP application

ZZ application
Priority claim

Priority claim

Patentable/Allowable

Request for PPH

CNIPA application

ZZ: any office(The first application is from the SAIP)

11

Divisional

12

Priority claim

13

14

M

A case not meeting requirement (f)- Examination has begun before a request for PPH -SAIP application

Patentable/Allowable

Priority claim

CNIPA application

NFirst Office Action (examination)

Request for
PPH

A case not meeting requirement (d)- The application has not been published at the time ofrequest for PPH -SAIP
Application

Patentable/Allowable
Priority Claim

CNIPA Application

Request for PPH15Publication

A case not meeting requirement (e)O- The application has not entered into substantive
examination stage at the time of request for PPH Patentable/Allowable

SAIP Application
Priority Claim

CNIPA Application

PSAIP Application

Request for
Substantive
Examination

Request for PPH

Notice of Invention PatentApplication Entering into
Substantive Examination
StageA case meeting requirement (e) (exception)- PPH request simultaneously with the Request for Substantive
Examination Patentable/Allowable

Priority Claim

CNIPA Application

Publication
Simultaneously

Request for PPH
Request for Substantive
Examination

16

Notice of Invention Patent
Application Entering into
Substantive Examination
Stage