Author: 

    Michael Gamble, Principal / Washington, D.C. Metro Office

    Harness IP

Coauthors:

    Yingcong Xu, Deputy General Manager, Patent Attorney

    Lele Xu, Department Manager, Patent Attorney

    Ying Ma, IP consultant

    Watson & Band

With the January 28, 2025 termination of the Climate Change Mitigation Pilot Program (CCMPP), applicants for US patent protection have lost an important option for cost-effective prioritized examination of certain “green” patent applications.  However, other options for prioritized examination of “green” patent applications remain throughout the world.  This post is part of a series of posts exploring options for prioritized treatment of “green” patent applications in various jurisdictions outside the US.

Patent applicants seeking expedited examination of “green” patent applications in China have two options available:

First, the China National Intellectual Property Administration (CNIPA) enables Expedited Examination of certain qualifying patent applications or patent reexamination cases under Section 8.2, Chapter 7, Part V of the Patent Examination Guidelines and as prescribed in the Administrative Measures for Prioritized Examination of Patents.  Such certain qualifying patent application/reexamination cases include cases falling within the scope of “key industries of China,” which include “energy conservation and environmental protection” and “new energy” industries, which may constitute a core sector of the green technology field.[1]

Eligible patent applications must be classified as having a main International Patent Classification (IPC) number as prescribed within the scope of (1) the Green Technology Patent Classification System and (2) the Strategic Emerging Industries Classification and International Patent Classification Reference Table (2021).

Furthermore, the technical subject matter of the eligible patent applications must be in strict alignment with the keywords corresponding to the main classification number in the aforementioned documents. 

Additionally, applicants seeking Expedited Examination of an eligible patent application must provide materials of the prior art or the available design information and relevant certificates.  But there is no limit on the country of a priority application for the application seeking Expedited Examination.  Also, there are no official fees for requesting Expedited Examination.

Upon grant of Expedited Examination of an eligible patent application, the first Office Action is to be issued within 45 days of the grant, and the application closed within a year of the grant.  For a patent application for utility model and design, the case is to be closed within two months of the grant of Expedited Examination.[2]

Additionally, in response to the first Office Action, the applicant must respond very quickly: within two months from the issuing date of the notification of the Office Action in the case of an invention application, or within 15 days in the case of a utility model or design patent application.[3]

Also, the CNIPA may eject the application from the Expedited Examination program into the normal examination program if (1) voluntary amendments are made to the application, (2) a response to an Office Action is submitted after the above-noted expedited time limits, (3) the applicant files “false materials,” or (4) the application is found during examination to be an abnormal patent application.[4]

Another option to expedite green PCT international applications entering the national phase in China is to file a request for priority examination with the CNIPA by submitting paper application documents duly sealed and endorsed by the local intellectual property bureau, on the condition that the application complies with the provisions of the CNIPA Order No. 76, Measures for the Priority Examination of Patent Applications.

Green patent applications may also be expedited through China’s patent pre-examination procedure, a pre-filing review service provided by local Intellectual Property Protection Centers of all provinces, autonomous regions and municipalities directly under the Central Government for filed entities. Applications that pass the pre-examination can enter the fast-track review channel of the China National Intellectual Property Administration (CNIPA), with the authorization cycle for invention patents shortened to 3–6 months.

The key requirements for this procedure are as follows:

• the applicant must be a Chinese enterprise, university or other institution registered in the jurisdiction of the relevant Protection Center, which has completed filing with the corresponding Center and has no adverse intellectual property records;

• individuals are not eligible to apply, and for joint applications, the filed entity must be the first applicant;

• the technical field of the patent application must fall within the scope of the local key industries approved by the Protection Center, such as the new generation of information technology, biomedicine and high-end equipment manufacturing.

• Only new applications for invention, utility model and industrial design patents may be submitted for pre-examination, excluding PCT applications entering China, divisional applications and cases subject to confidentiality review.

In addition, the same subject matter cannot be filed for both invention and utility model patents on the same day, and after passing the pre-examination, the applicant must submit the formal patent application and pay the relevant fees in a timely manner in accordance with the requirements

Yet another option available to applicants seeking expedited patent protection in China is to simply pursue accelerated examination via the Patent Prosecution Highway (PPH) based on a priority patent application from another jurisdiction having a positive result, for which there is no restriction on the technical field for patent applications seeking examination acceleration via the PPH, and so “green” patent applications are fully eligible to utilize this channel without technical limitations.  Unlike the Expedited Examination program, however, PPH is only available for invention patent applications and may be subject to limitations depending on a priority country.  Also, PPH imposes strict limits on patent claim scope requirements and imposes an elevated risk of narrowing of the scope of the claims and/or amendments being found improper as being out of scope of the allowed priority application claims.

In comparison of the above options: PPH (Patent Prosecution Highway) is suitable for applicants who prioritize patent grant probability, can meet its strict requirements, and are not sensitive to potential narrowing of the scope of claims; while expedited examination is suitable for applicants who can complete responses in a short period of time, or who have missed the opportunity for PPH but meet the eligibility criteria for expedited examination.

Overall the Chinese Expedited Examination program (and to a lesser extent, the PPH program) offer applicants a cost-effective option for obtaining expedited patent protection for certain “green” technology patents in China, and China’s priority examination of PCT national phase applications and patent pre-examination procedure can provide additional options for expediting certain green patent applications. In addition, under certain circumstances, an expedited allowed Chinese patent might be used for PPH at the USPTO, which might allow for expedited US examination of green patents allowed in China (albeit with similar restrictions as PPH cases in China).

[1] https://www.wipo.int/export/sites/www/scp/docs/expedited-examination-china.pdf

[2] Id.

[3] Id.

[4] Id.