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Patent Examination Procedures in China (I) Patent Prioritized Examination
View: 115 Date: 2024-01-29 08:34
Author: Baitao XIE
With the rapid growth in the number of patent applications and the quick iteration of technologies in areas such as the internet, big data and cloud computing, patent applicants are eager to obtain patent rights as soon as possible. At the same time, for the invalidation cases, due to the occurrence of disputes such as infringement litigation, it is also urgent to accelerate the examination of the right confirmation procedure. To meet this demand, China National Intellectual Property Administration implemented the Administrative Measures for Patent Prioritized Examination on August 1, 2017, giving prioritized examination to some qualified patent applications, re-examinations and invalidation cases.
I. For the policy of prioritized examination, the types of applicable cases, applicable circumstances and accelerated results can be detailed in the following table.
Types of applicable cases | Applicable circumstances | Accelerated results |
(1) Patent application and re-examination 1. Patent application for invention at the stage of substantive examination (need to have received the notice of substantive examination). 2. Patent application for utility model and design (need to have received the notice of acceptance, and have paid the application fee). 3. Re-examination for three types of patent. | (1) Patent application and re-examination 1. Involving energy conservation and environmental protection, new generation information technology, biology, high-end equipment manufacturing, new energy, new material, new energy vehicle, intelligent manufacturing and other key national development industries. 2. Involving industries encouraged by the people's governments at the provincial level and at the city level divided into districts. 3. Involving the internet, big data, cloud computing and other fields, and the technology or product update fast. 4. The patent applicant or the applicant for re-examination has prepared or begun to implement the invention/creation, or has evidence that another person is implementing the invention/creation. 5. The patent application for the same subject matter is first filed in China and the application was filed in another country or region. 6. Other matters of great significance to the national or public interests require prioritized examination. | (1) Patent application and re-examination The case shall be closed within the following time limit from the date when CNIPA agrees to the prioritized examination: 1. The patent application for invention shall be closed within 1 year. 2. The patent application for utility model and design shall be closed within 2 months. 3. Patent re-examination case shall be closed within 7 months.
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(2) Invalidation 1. Invalidation cases for three types of patent. | (2) Invalidation 1. For the infringement dispute occurred against the patent involved in the invalidation case, the relevant parties have requested the local intellectual property office to handle, and brought a suit to the people's court, or requested arbitration and mediation to the relevant organization. 2. The patent involved in the invalidation case is of great significance to the national or public interests. | (2) Invalidation 1. The patent for invention or utility model shall be closed within 5 months. 2. Patent for design shall be closed within 4 months. |
Compared with the closing cycle of ordinary cases, the closing cycle of above prioritized examination procedures for patent application and re-examination will be significantly shortened, and the acceleration of invalidation case is not obvious, the specific comparisons are as follows:
The closing cycle of ordinary cases | The closing cycle of prioritized examination | |
Patent application for invention | About 18 months on average | Within 12 months |
Patent application for utility model and design | About 6 months on average | Within 2 months |
Re-examination | About 16 months on average | Within 7 months |
Invalidation case | About 6 months on average | Invention, utility model: within 5 months Design: within 4 months |
The number for cases that can be given prioritized examination shall be determined by CNIPA based on the examination capacity of different technical fields, the number of patents granted in the previous year and the number of pending cases in the current year. If the application for prioritized examination submitted by the applicant meets the requirements of the local intellectual property administration department and there are places available, the local intellectual property administration department will recommend the prioritized examination to CNIPA. CNIPA will exam the patent application "recommended" for prioritized examination in accordance with the relevant provisions, and if it passes, CNIPA will issue the "Notice of Patent Application for Prioritized Examination".
II. Documents that need to be submitted for prioritized examination
1. The request for prioritized examination.
2. Prior art or prior design information materials and related supporting documents. The relevant supporting documents should be clarified the technical field of the patent, the reasons for meeting the prioritized examination requirement, the overview of the technical scheme of the patent and the main use (or significance).
3. In addition to point 5 of the above applicable circumstances, the request for prioritized examination shall be signed by the relevant department of The State Council or the provincial intellectual property office.
4. If the applicant is enterprise, a copy of the business license with the official seal shall be submitted.
III. The special requirements of prioritized examination in time limit to respond to the office action
The time limit for the applicant to respond to the office action of invention patent shall be 2 months from the date of issuance of the notification, and the time limit for the applicant to respond to the office action of utility model and design patent shall be 15 days from the date of issuance of the notification.
For patent re-examination and patent invalidation requesting prioritized examination, the time limit for responding to the office action is the same as ordinary case.
The comparisons of the time limit for responding to the office action between prioritized examination and ordinary case are as follows:
Time limit for responding to OA for ordinary case | Time limit for responding to OA for prioritized examination | |
Patent application for invention | First OA: 4 months N-th OA: 2 months | 2 months |
Patent application for utility model and design | 2 months | 15 days |
IV. Notice
1. Circumstances that are not applicable to prioritized examination. According to the provisions of Section 8.2, Chapter 7 of Part V of the latest Guidelines for Patent Examination, which took effect on January 20, 2024, where the same applicant applies for both utility model and invention for the same invention-creation on the same day (only refers to the filing date), the application for invention is generally not applicable to prioritized examination.
2. For each application, only one prioritized examination may be filed for a single reason.
3. The circumstances that CNIPA ceases prioritized examination and proceeds according to ordinary procedures.
(1) Patent application:
a. After the request for prioritized examination has been accepted, the applicant requests for voluntary amendment the application documents in accordance with paragraphs 1 and 2 of Article 57 of the Implementing Regulations of the Patent Law.
b. The applicant’s response exceeds the time limit.
c. The applicant submits false materials.
d. Abnormal patent application being found during examination.
(2) Patent re-examination or invalidation case:
a. Deferred response made by the applicant for re-examination.
b. After the request for prioritized examination is accepted, the applicant for invalidation supplements evidence and reasons.
c. After the request for prioritized examination is accepted, the patentee amends the claim by means other than deletion.
d. The patent re-examination or invalidation procedure is suspended.
e. The examination of the case relies on the conclusion of the examination in other cases.
f. Difficult cases, and approved by the leader of the re-examination and invalidation department.
4. Recommendation for prioritized examination of foreign applicant. Foreign applicant can also apply for prioritized examination, which needs to be recommended to prioritized examination by the intellectual property management department where the agency who handles the patent application is registered.
In summary, the prioritized examination system has the advantages of wide scope of application, low difficulty in preparing documents and significantly shortening the closing cycle of patent examination, so it is worthy of consideration by the applicants.