IPONZ and CNIPA launch Patent Prosecution Highway Programme

Currently IPONZ is part of the Global Patent Prosecution Highway (GPPH) network. The GPPH network currently has 28 members, and allows for expedited examination to be requested where another patent office of the GPPH network has accepted claims on a corresponding patent application. As previously noted IPONZ joined the GPPH network in July 2017, and requires that the application from the Office of Earlier Examination (OEE) and the application for which IPONZ has been requested to examine under the terms of the GPPH have the same earliest date. Further, all claims presented for examination under the GPPH must sufficiently correspond to one or more of the claims found allowable by the OEE.

The CNIPA is not part of the GPPH, but has bilateral PPH agreements with numerous countries. As with IPONZ’s requirements under the GPPH, the PPH between IPONZ and the CNIPA will require the applications to have the same earliest date and sufficiently correspond to one or more of the claims found allowable.

The following documents along with English copies or translations are required as part of a CNIPA PPH request:

• A copy of the work product(s) issued by the CNIPA which expressly identify the patentable claims.
• 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.

IPONZ may request a verified English translation if the translation of the accepted Chinese claims does not align with the claims IPONZ has been requested to examine in order to determine if these claims sufficiently correspond.

Further details can be found on the CNIPA PPH page on the IPONZ website.

Authors: Quinn Miller and Jim Piper