ISIPO PCT-PPH Guidelines for Chinese applicants

Procedures to file a request to theIcelandic Patent Office for the use of thePCT-Patent Prosecution HighwayPilot Program between theIcelandic Intellectual Property Office (ISIPO) and the China
National Intellectual Property Administration (CNIPA)
PCT-Patent Prosecution Highway Pilot Program (PCT-PPH)[0001] The PCT-PPH pilot program is established to enable an applicant, who has received(1) a Written Opinion (WO/ISA or WO/IPEA) from CNIPA, or(2) an International Preliminary Examination Report (IPER) from CNIPA,
that indicates that at least one claim in the PCT application has novelty, inventive step and industrial
applicability, to file a PCT-PPH request to have the corresponding IS application enter into an
accelerated procedure.
This PCT-PPH pilot will commence on 1 July 2014, for a period of two years, ending on 30 June 2016.
The pilot period may be extended if necessary until SIPO and the IPO receive a sufficient number ofPCT-PPH requests to adequately assess the feasibility of the PCT-PPH program. The Offices may also
terminate the PCT-PPH pilot program if the volume of participation exceeds a manageable level, orfor any other reason. A notice will be published if the PCT-PPH pilot program is terminated. A requestfor PCT-PPH is free of charge at the ISIPO.

Requests to the ISIPO[0002] An applicant should file a request for accelerated examination under the PCT-Patent
Prosecution Highway (PPH) to the ISIPO by submitting a letter requesting accelerated examination
under the PCT-PPH accompanied by the relevant supporting documents. The requirements for anapplication to the ISIPO for accelerated examination under the PCT-PPH are given in paragraph [0003]
and relevant supporting documentation is discussed in paragraph [0004].

Requirements for requesting accelerated examination under the PCT-PPH
Pilot Program at the ISIPO:[0003] There are four requirements for requesting accelerated examination under the PCT-PPH
pilot program at the ISIPO. These are:a) The ISIPO application is either:(i) a national phase application of the corresponding international application (examples are providedin Annex 2: figures A, A’, and A’’); or(ii) a national application from which the corresponding international application claims priority(example is provided in Annex 2: figure B);(iii) a national phase application of an international application claiming priority from the1/12

ISIPO PCT-PPH Guidelines for Chinese applicantscorresponding international application (example is provided in Annex 2: figure C); or(iv)a national application claiming foreign/domestic priority from the corresponding international
application (example is provided in Annex 2: figure D); or(v)a derivative application (divisional application, application claiming internal priority, etc.) of theapplication which satisfies one of the above requirements (i) – (iv) (examples are provided in Annex 2:
figures E1 and E2).
b) The application has one or more claims that are determined to be allowable in the latest work
product of the corresponding PCT application
The latest work product (WO/ISA, WO/IPEA or IPER) in the international phase of a PCT application
corresponding to the application, must indicate that at least one claim is allowable (from the aspect ofnovelty, inventive step and industrial applicability). The applicant cannot file a request under PCTPPH on the basis of an International Search Report (ISR) only.
If any observation is made in Box VIII of the work product which the request for PCT-PPH is based
upon, the applicant must explain why the claim(s) is/are not subject to the observation and whether or
not an amendment is submitted to correct the observation. The application will not be eligible forparticipating in the PCT-PPH pilot program if the applicant fails to explain why the claim(s) is/are notsubject to the observation. However, in this regard, it does not affect the decision on the eligibility ofthe application, whether the explanation is adequate and/or whether the amendment submitted
overcomes the observation.
Note that the ISA / IPEA which produced the WO/ISA, WO/IPEA and the IPER must be the CNIPA,
however the application from which priority is claimed could be from any office, see Annex 2,
example A’ (application ZZ can be any national application).
c) Claim correspondence
All claims on file, as originally filed or as amended, for examination under the PCT-PPH must
sufficiently correspond to one or more of those claims indicated as allowable in the CNIPA as
ISA/IPEA.
Claims are considered to "sufficiently correspond" where, accounting for differences due totranslations and claim format, the claims in the ISIPO are of the same or similar scope as the claims inthe CNIPA, or the claims in the ISIPO are narrower in scope than the claims in the CNIPA.
In this regard, a claim that is narrower in scope occurs when a claim indicated as allowable in theCNIPA is amended to be further limited by an additional feature that is supported in the specification(description and/or claims).
A claim in the ISIPO which introduces a new/different category of claims to those claims indicated asallowable in the CNIPA is not considered to sufficiently correspond. For example, the claims indicatedas allowable in the CNIPA only contain claims to a process of manufacturing a product, then theclaims in the ISIPO are not considered to sufficiently correspond if the claims in the ISIPO introduce
product claims that are dependent on the corresponding process claims.
d) The ISIPO has not yet issued a “Communication of Approval”
The IPO has not yet issued a “Communication of Approval.” The heading of such communications iseither•“Fyrirhuguð útgáfa einkaleyfis” (in Icelandic) or ”Intention to Grant” (in English), or•“Tilkynning um veitingu einkaleyfis” (in Icelandic) or “Notification of Grant” (in English).

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Documents to be submitted when filing a request for accelerated
examination under the PCT-PPH:[0004] The applicant must submit the following documents a)-d) attached to the request form (seeAnnex 3) when filing a request under PCT-PPH. All documents under this paragraph with exceptionfor the cited documents have to be drawn up in English or translated to Danish or English.
a)A copy of the latest international work product of the corresponding international application
In case the application satisfies the relationship a(i) in paragraph [0003], the applicant does not need tosubmit a copy of the International Preliminary Report on Patentability (IPRP) because a copy of these
documents is already available in the file-wrapper of the application. In addition, if the copy of the1latest international work product is available via PATENTSCOPE® ,*, an applicant does not need tosubmit these documents, unless otherwise requested by the patent Office (WO/ISA and IPER are
usually available as “IPRP Chapter I” and “IPRP Chapter II” respectively after 30 months from thepriority date.). Machine translation into English is admissible.
b) A copy of a set of claims which the latest international work product of the corresponding
international application indicated as allowable
If the copy of the set of claims which are indicated as allowable is available via PATENTSCOPE® (orthe international Patent Gazette has been published), an applicant does not need to submit thisdocument, unless otherwise requested by the ISIPO. Where translations to English of the allowableclaims are necessary, they must be submitted by the applicant since PATENTSCOPE® does notprovide them. Machine translation is admissible.
c) Copies of references cited in the latest international work product of the corresponding
international application
If the references are patent documents, the applicant does not have to submit them because the Officeof the application usually has access to them. When the Office of the application does not have accessto the patent document, the applicant has to submit the patent document at the examiner’s request.
Non-patent literature must always be submitted.
Submission of translation of the references is not required. However, if the person handling theapplication at the ISIPO has difficulties in understanding the references, the applicant may berequested to submit translations thereof. Furthermore, applicants will be free to file translations as partof the supporting documentation when initially requesting accelerated examination under the PCTPPH to allow prompt consideration of the citations if the applicants so desire.
d) Claim correspondence table
The applicant must submit a claim correspondence table to explain the correspondence of claims
determined to be allowable in the latest work product of the corresponding international application
and all claims in the application (See Annex 4). The claim correspondence table must be written ineither English or Danish.
e) Request form
An applicant should submit a request form (See Annex 3) for the accelerated examination under thePCT-PPH along with the documents referred to in paragraphs a)-d) above.
When the applicant has already submitted the documents mentioned above in paragraphs a)-d) to theISIPO in an examination procedure of the patent family application, through simultaneous or pastprocedures, the applicant may incorporate the documents by reference and is thus not required toattach the documents.

1 http://www.wipo.int/pctdb/en/index.jsp

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ISIPO PCT-PPH Guidelines for Chinese applicants

Procedure for the accelerated examination under the PCT-PPH[0005] The applicant files request for accelerated examination under the PCT-PPH Pilot Program tothe ISIPO, by filing the relevant supporting documents and a completed request form (see Annex3).The application for accelerated examination under the PCT-PPH may be made by e-mail orconventional mail.
E-mail requests for PCT-PPH processing at the IPO must be sent to: hugverk@hugverk.is.
PCT-PPH requests sent by conventional mail must be sent to:
The Icelandic Intellectual Property Office
Engjateigur 3
IS-150 Reykjavik
Iceland
The PCT-PPH request form should be the uppermost document when applying for accelerated
examination by conventional mail to ensure that the request is processed correctly. All subsequentcorrespondence from the applicant to the ISIPO must be clearly identified as concerning a PCT-PPH
pilot program application to ensure that the correspondence is processed correctly.
The ISIPO decides whether the application can be entitled the status of accelerated examination under
the PCT-PPH when the ISIPO receives a request with the documents stated above. When the ISIPO
decides that a request is acceptable, the application is assigned a special status for accelerated
examination. The applicant will be notified if the request is accepted.
If the request does not meet all the requirements set forth above, the applicant will be notified and thedefects in the request will be identified. When the request is corrected by the applicant, the application
will continue its accelerated examination under the PCT-PPH.
[0006] If the request for participation in the PCT-PPH pilot program meets all the requirements, theISIPO will decide whether a patent will be issued or, should the documents submitted not beconsidered sufficient, the application is sent to the Danish Patent and Trademark Office (DKPTO) forexamination, in accordance with a partnership agreement. If the application is sent to the DKPTO,
their patent examiners will conduct the accelerated examination at the request of the ISIPO. The ISIPO
will notify the applicant in advance, should the application proceed to further examination at DKPTO.

ANNEX 1
Examples for the claim correspondence table

The claims in the following cases are considered to “sufficiently correspond”.

EX.1
Claims in the international
phase
1

ISIPO claimsComment

1

The ISIPO claim has theadditional component on theclaim that is determined to bepatentable by CNIPA.
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Allowable claim, corresponding PCT-appl.
A system for presenting a container
storing at least
one article to a processing tool, comprising:(a) a load port, including:a frame having an opening;a support structure being adapted toreceive acontainer, anda drive mechanism for moving said
support structure
substantially vertically between a firstheight and asecond height; and(b) a conveyor for movably supportingthe container
substantially along a container transportplane;
wherein a container traveling on said
conveyer moves
unobstructed over said support structure
when said
support structure is located in said second
height,wherein the container travelingunobstructed does notcontact said support structure while
traveling over said
support structure located at said second
height,wherein said support structure, whenlocated at said
second height, is located below saidtransport plane.
*This additional part is NOT included in theallowable claim but it is included in the descriptionof the national claim

Claim, national appl.
A system for presenting a container
storing at least
one article to a processing tool, comprising:(a) a load port, including:a frame having an opening;a support structure being adapted toreceive acontainer, anda drive mechanism for moving said
support structure
substantially vertically between a firstheight and asecond height; and(b) a conveyor for movably supportingthe container
substantially along a container transportplane;
wherein a container traveling on said
conveyer moves
unobstructed over said support structure
when said
support structure is located in said second
height,wherein the container travelingunobstructed does notcontact said support structure while
traveling over said
support structure located at said secondheight,
wherein said support structure, whenlocated at said
second height, is locatedd below saidtransport plane,
wherein said support structure, whenlocated atsaid first height, is located above saidtransportplane*.

EX.2
Claims in the international
phase
1
None

ISIPO claimsComment

12SameThe ISIPO claim 2 is dependent
on the ISIPO claim 1, which has
been determined to bepatentable by CNIPA.

Allowable claim, corresponding PCT-appl.

Claim, national appl.
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ISIPO PCT-PPH Guidelines for Chinese applicants

1. A nitride-based semiconductor device
comprising:a first semiconductor layer, consisting ofeither an ntype nitride-based semiconductor layer having
awurtzite structure or an n-type nitride-based
semiconductor
substrate having a wurtzite structure; andan n-side electrode formed on a back surface
of saidfirst semiconductor layer,
wherein a dislocation density is not more than
1*109cm2in the vicinity of the interface between said
firstsemiconductor layer and said n-side electrode,andcontact resistance between said n-side
electrode andsaid first semiconductor layer is not more than
0.05
Ωcm2
2. (None)

1. (Same)

2. The nitride-based semiconductor
deviceaccording to claim 1, wherein said first
semiconductor layer includes an n-type
dopant* .
*This additional part is NOT included in theallowable claim but it is included in the description ofthe national application

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ANNEX 2
Examples of the applications eligible for PCT-PPH

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ISIPO PCT-PPH Guidelines for Chinese applicants

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ANNEX 3
PCT-PPH REQUEST

Request for

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ISIPO PCT-PPH Guidelines for Chinese applicants

Accelerated Examination at the ISIPO using the PCT international work products under the Patent
Prosecution Highway Pilot Program between the ISIPO and CNIPA (PCT-PPH pilot program)

IS application number:Corresponding PCT application number:

For the purposes of participation in the PCT-PPH, the following documents should be
attached/are required:

1. Either:1a) A copy of WO-ISA, WO-IPEA or IPER in English or a translation thereof in Danish orEnglishor1b) Request to obtain documents in 1a) via PATENTSCOPE®
2. Either:2a) A copy of all claims determined to be patentable/allowable by the ISA or IPEA in Englishor a translation thereof in Danish or Englishor2b) Request to obtain documents in 2a) via the PATENTSCOPE®
3. Copies of all documents cited in the WO-ISA, WO-IPEA or IPER (except for patentdocuments)
4. Claim correspondence table

Please ensure that this is the uppermost document when requesting accelerated examination
under the PCT-PPH.

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ANNEX 4Claim Correspondence Table:
Claims in the international
phase

ISIPO ClaimsComments

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