Patent Examination Procedures in China (II) — Expedited Pre-examination System

View: 131     Date: 2024-02-02 09:26

Author: Wenwen MA

The expedited pre-examination system is a mechanism introduced by China National Intellectual Property Administration to examine in advance whether the application meets the conditions for granting a patent and to accelerate the approval process before the application is formally filed. The intellectual property protection centers set up all over the country examine the pre-examination applications submitted by innovative subjects, and issue the notification of qualification for pre-examination to those that meet the requirements after examination. The applicant should file the formal patent application to CNIPA within the specified period in the pre-examination notification, and the patent application will enter the expedited examination channel and the grant cycle can be significantly reduced.

I. Who is applicable

Requirements in the technical fields: Around the new generation of information technology, high-end equipment manufacturing, biomedicine, new materials, energy conservation and environmental protection and other more than 20 high-end industries, the technical fields handled by the intellectual property protection centers vary from place to place.

The requirements for innovative subjects: 1) the registration place should be in the administrative area of the intellectual property protection center, 2) having qualification of independent legal entity, 3) the business scope meets the requirements of the technical fields, 4) having certain intellectual property work foundation, 5) no abnormal application behavior or has been corrected or eliminated in time, etc.

Special circumstances where the expedited pre-examination system is not applicable:

1) PCT international applications, 2) PCT applications for national phase in China, 3) divisional applications, 4) the same applicant applies for both utility model and invention for the same invention-creation on the same day as stipulated in Article 9, paragraph 1 of the Patent Law, 5) applications requiring confidentiality examination as stipulated in Rule 7 of the Implementing Regulations of the Patent Law, 6) Patent applications not for the purpose of protecting innovation.

II. Expedited pre-examination procedures

The expedited pre-examination procedures mainly includes three parts: the filing of the subject qualification, the pre-examination of the patent application and the expedited examination of the patent application. The filing of the subject qualification and the pre-examination of the patent application are all completed by the local intellectual property protection centers.

(1) The filing of the subject qualification

The applicant submits an application for filing to the intellectual property protection center, and if the applicant meets the qualification of the patent pre-examination procedures after examination, shall register for filing.

(2) Pre-examination of the patent application

Requirements for submission of documents: Patent application documents, and according to the different requirements of the local intellectual property protection center, it may also be necessary to submit an application form for expedited pre-examination service, a letter of commitment, joint research and development certification materials (applicable to two or more applicants) and self-examination form. Among them, the patent application document shall be exported after editing in the patent application and procedure column of the patent business handling system of CNIPA, and it shall contain xml format. For invention patent, when applying for pre-examination, the request for substantive examination and the request for earlier publication of the patent application must be filed at the same time. The applicant shall also give up the voluntary amendment stipulated in Rule 57 of the Implementing Regulations of the Patent Law.

Contents of examination for patent application documents:

(3) Pre-examination of the patent application

Filing and acceptance of formal patent application:

After examination by the intellectual property protection center, the application which meets the pre-examination conditions, the applicant must file the formal patent application to CNIPA within the specified time in the notification of qualification for pre-examination, and on the filing date or within 1 working day from CNIPA issued the notice of acceptance of the patent application to complete the full payment of the fees online. And submit the patent application number and the screenshot of payment voucher to the intellectual property protection center, intellectual property protection center will submit the related information of pre-examination of patent application to CNIPA for marking, the marked patent applications will enter the expedited examination channel.

Special requirements to keep in the expedited examination channel:

If not meet the requirements in the above table, such as the late response to the examination opinion or the conditions of grant are not met within the allowed times of notice of examination opinion, the patent application will be withdrawn from the expedited examination channel and enter the ordinary examination channel. It is worth noting that for all types of patent applications, if issue the notice of correction, the application will enter the ordinary examination channel, which once again indicating that the expedited pre-examination case must avoid obvious formality defects.

III. Summary and application

Expedited pre-examination can greatly shorten the grant cycle, help the applicant quickly obtain patent rights, and provide a guarantee mechanism for the timely and rapid commercial transformation of innovative achievements, but at the same time, it will restrict some of the rights and interests, decision-making space of the applicant, such as cannot be filing divisional application, making voluntary amendment, must be published in advance, and the request for substantive examination must be filed at the same time for filing the application, etc., the time limit for responding to examination opinion has been greatly shortened. Therefore, it should be combined with the technical maturity of innovative technology, iteration cycle, rapid protection needs, etc., to match and use the expedited pre-examination procedures correspondingly.