When both PCT and national applications receive positive examination opinions, which should you choose for submitting a PPH acceleration request?

Previously, we have discussed that for fast overseas patent applications through PPH, a positive opinion from either a national application or a PCT international search report is required. Many applicants submit a PCT application alongside their national patent application. Thus, when considering overseas entry based on a PCT application, companies might have the advantage of both an approved national application and a positive opinion from the PCT international search report.

When faced with these two “advantages,” how should one choose the basis for submitting a PPH request?

First, let’s explore how these two advantages can facilitate PPH-based overseas entry:

Part 1: Requesting PPH Acceleration Overseas Based on National Application Approval

The claims in the overseas application must substantially correspond to the approved claims of the national application. In other words, after submitting the PPH request, the overseas examiner will review the substantive content of the approved national claims. Consequently, the maximum protection scope that can be achieved for the overseas patent is limited to the scope of the approved national claims.

Part 2: Requesting PPH Acceleration Overseas Based on Positive PCT Search Report Opinions

When utilizing a positive opinion from a PCT search report for PPH acceleration, the claims in the overseas application must substantially correspond to those recognized in the PCT application. These recognized claims could be all the originally submitted claims or only a narrow subset of dependent claims.

If the claims approved in the national application and those recognized in the PCT search report are identical, it does not matter which one you choose. However, this ideal scenario is rare in practice.

During the national patent application process, the applicant often negotiates extensively with the examiner, potentially securing a favorable protection scope. Conversely, it is also possible that the examiner may reject the inventive step of all claims, forcing the applicant to extract numerous technical features from the specification and incorporate them into the claims, resulting in a very narrow protection scope.

In contrast, PCT claims generally remain unmodified during the international phase, and the PCT search report provides a preliminary opinion from the receiving office on the PCT claims.

Due to these dynamics, the scope of claims approved in the national application often differs from those recognized in the PCT search report.

Part 3: How to Make the Best Choice?

The decision depends on your core needs.

If the primary goal is to obtain patent grant quickly, applicants should pre-evaluate the “advantages” of both options, specifically assessing which set of claims demonstrates stronger inventiveness. Naturally, choosing the claims with stronger inventiveness provides a more secure path.

Many might wonder, since positive opinions have been given, won’t the overseas examiner directly grant the patent? Why is it necessary to evaluate inventiveness independently?

In essence, patent examinations are independent across different countries. A positive PPH result serves merely as a reference in the overseas jurisdiction, and there is no obligation for the examiner to fully adopt it. The final decision on patent grant still depends on the examination conducted by the national patent office during the national phase.

We’ve encountered numerous cases where applicants’ national applications were granted, yet faced inventiveness rejections when entering the United States.

If you aim for quick patent grant while also seeking to secure a broader protection scope, the applicant needs to collaborate with their agent to balance and judge based on protection scope, evidence collection, and core technical points.

Therefore, when preparing for overseas patents, the “secret” to choosing between accelerating with a granted national application or with a positive PCT opinion lies in understanding your needs. By aligning your choice with your specific requirements, you can more efficiently achieve your overseas application objectives.