According to Articles 34 and 35 of Chinese Patent Law, an invention patent application (versus a utility model or a design patent application) will be published within 18 months from its filing date (or earliest claimed priority date) after passing preliminary examination by the National Intellectual Property Administration (the “NIPA”). An applicant may apply to NIPA for substantive examination at any time within 3 years from its filing date (or the earliest claimed priority date), and NIPA will perform substantive examination after the application is published. In addition to the above-mentioned general time limit, Chinese Patent Law, the Administrative Measures for Prioritized Patent Examination and other relevant laws and regulations provide four ways to accelerate the grant of patent rights, including Early Publication and Examination, the Patent Prosecution Highway (the “PPH”), Prioritized Patent Examination and Patent Pre-examination.
Early Publication and Examination
According to Article 34 of Chinese Patent Law, an applicant may request NIPA to publish a patent application earlier than 18 months from its filing date (or earliest priority date when priority is claimed).
Under patent examination practice in China, patent applications will normally be published within 4-6 months after the applicant files a request for early publication. If the applicant requests early publication and has applied for substantive examination by the time the application publishes, the application will enter the substantive examination phase immediately after publication, thereby shortening the examination period and facilitating the grant of patent rights.
The PPH is an accelerated examination approach provided by patent offices in different countries for foreign patent applications. If at least one claim of the application submitted by the applicant with the Office of First Filing (“OFF”) is determined to be patentable, the applicant can request accelerated examination in the Office of Second Filing (“OSF”). At the end of 2011, NIPA launched its first PPH pilot project between China and Japan, and then signed PPH project agreements with several other countries. At present, China has carried out PPH projects with more than 20 countries, including the United States, Japan, the United Kingdom, Russia, etc.
1. Types of PPH
Applicants can request accelerated examination using one of the following three approaches:
a) Conventional PPH: An applicant files a PPH request to the OSF based on the results of the work of the OFF, which mainly includes the PPH through the Paris Convention and the Patent Cooperation Treaty (PCT).
b) PPH-MOTTAINAI: Based on the conventional PPH, the PPH-MOTTAINAI expands the conditions for the PPH to be accepted, such where an office which is not the OFF finds an application patentable or where the OSF makes the results of the examination available earlier.
c) PCT-PPH: An applicant files a PPH request in the relevant patent office based on the work product produced during the PCT international phase.
2. Timing of the Request
An applicant can submit a PPH request either at the time of applying for substantive examination with NIPA, or after the patent application begins substantive examination but prior to receipt of the first office action.
3. Conditions of the Request
According to the IP5 PPH Guidelines and the instructions of NIPA’s official training materials, applications are eligible for PPH if the following three conditions are satisfied:
a) There is connection between the Chinese application and the corresponding foreign application. For example, the Chinese application effectively claims priority to a corresponding foreign application based on the Paris Convention, or has the same priority as the corresponding foreign application, etc.;
b) At least one claim of the foreign corresponding application is patentable; and
c) There is full correspondence of claims. In other words, the scope of claims of the Chinese application is the same as or narrow than that of the claims found to be patentable in the corresponding foreign application. Claims will not meet the requirements of full correspondence if new or different types of claims (e.g., different claim categories) are introduced into the claims of the Chinese application.
4. Acceleration Effect
Generally, it typically takes at least 20 months for an invention patent application to grant. In contrast, under the PPH, it takes about 7-12 months from the filing of a PPH request for a patent to grant. In addition, the chance of a successful grant of a patent right is higher using the PPH.
Pursuant to the Administrative Measures on Prioritized Examination of Invention Patent Applications (the “2012 Measure”) released in August 2012, China established a prioritized examination system. After amendments were made to the 2012 Measure, the Administrative Measures for Prioritized Patent Examination (the “2017 Measure”) were released on June 27, 2017, which expanded the scope, refined the conditions of applying prioritized examination, and improved the process of examination. The details are as follows.
1. Timing of Request
According to the provisions of Article 2 of the 2017 Measure, an application for prioritized examination for an invention patent application must be filed after the application has entered the substantive examination phase. An application for prioritized examination for a utility model or design patent application can only be filed after the classification number has been determined. There is no fee for filing for prioritized examination for either an invention, utility model or design patent application.
2. Patent Applications Available for Prioritized Examination
According to Article 2 of the 2017 Measure, prioritized examination is available for the following six types of patent applications.
a) Applications in industries strongly supported by the central government, such as energy saving and environmental protection, newly generated information technology, biology, high-end equipment manufacturing, and new types of energy, materials, energy vehicles, intelligent manufacturing, etc.
b) Applications in industries strongly encouraged by the provincial governments and municipal governments.
c) Applications relating to the Internet, big data, cloud computing and other fields and covering ever-changing technologies or products.
d) Applications where the applicant is preparing or has started to commercialize the invention or where there is evidence demonstrating that others are commercializing the invention.
e) After the application is first filed in China, it is filed in other countries or regions claiming the same subject matter.
f) Other applications which are significant to the national interest or public interest and require prioritized examination.
Article 8.2, Chapter 7, Part V of the Guidelines for Patent Examination (the “Guidelines”) provides that if the same applicant applies for an utility model and invention patent for the same invention on the same day (e.g., have the same filing date only), the invention patent application will not be accepted for prioritized examination.
3. Time Limits for Response to Office Actions
According to the Chinese Patent Law and the Guidelines, the time limit for responding to a first office action in an ordinary application is 4 months, and 2 months for each office action thereafter (which can be extended for another 2 months). For applications under prioritized examination, the time limit for response is 2 months for all office actions of an invention patent application and 15 days for all office actions for a utility model or design patent application.
4. Acceleration Effect
According to Article 20 of the 2017 Measures, prioritized examination of invention patent application must be concluded within 1 year from the date that NIPA grants the prioritized examination. Prioritized examination of utility model and design patent applications must be concluded within 2 months from the date NIPA grants the prioritized examination.
After the release of the Notice for Rapid Collaborative Protection of Intellectual Property Rights on November 23, 2016, many intellectual property protection centers have been successively set up throughout China. These intellectual property protection centers perform patent pre-examination services for patent applications. The pre-examination services mainly include examining applications for formality and obvious substantive defects and examining whether these applications are directed to national security or major national interests (which may further require that a national security application be submitted). Applications that pass pre-examination can quickly enter the examination channel before the NIPA.
1. Conditions of Application
In order to apply for pre-examination before an intellectual property protection center, an application must satisfy the following four conditions:
a) The applicant should submit the pre-examination application to the proper intellectual property protection center prior to formally submitting the patent application to NIPA;
b) The registered address of the applicant must be in a location where an intellectual property protection center is located;
c) The applicant has been recorded before the intellectual property protection center (For the purposes of recordal, an applicant must provide certain materials required by the relevant intellectual property protection center, which may vary from center to center. However, in general, an applicant must demonstrate that it has established a good foundation for its intellectual property work (e.g., it has a stable intellectual property management team and has established a standardized intellectual property management system) and is in the industry of generating information technology or high-end equipment; and
d) The application submitted must be within the technical field of the intellectual property protection center.
Different intellectual property protection centers provide patent pre-examination services in different technical fields. For example, the Beijing Center mainly focuses on the fields of generating new information technology and high-end equipment manufacturing, the Shanghai Pudong Center focuses mainly on the fields of biomedical and high-end equipment manufacturing, and the Guangdong Center focuses mainly on the fields of new generation of information technology and biological industry, etc.
2. Applications for which Pre-examination is not Applicable
Pre-examination is not available for the following applications:
a) An invention patent application for which a utility model patent application claiming the same subject matter is filed on the same day (e.g., have the same filing date).
b) A divisional application of an earlier filed invention application.
c) Applications involving major national interests or security (i.e., these applications must be submitted as national security applications).
d) International applications submitted through PCT and applications entering China via the national phase.
3. Time Limits for Response
A patent application submitted to the NIPA after pre-examination will be converted into an ordinary application under the following circumstances: (1) for an invention patent application, when the applicant fails to submit a response to the first office action within 10 working days and the second office action within 5 working days, or the application cannot be granted after the applicant responds to the second office action; (2) for a utility model patent application, where a patent cannot be granted after the applicant responds to the first office action; or (3) for a design patent application, where the patent office of preliminary examination issues an office notice.
4. Acceleration Effect
According to an official news release, the time to grant for a patent application submitted to NIPA after passing pre-examination can be shortened to: (1) about 3 months for invention patents; (2) about one month for utility model patents; and (3) less than 10 days for design patents.
However, it should be noted that an applicant can only submit a formal patent application to NIPA after receiving notice that the application has passed pre-examination. Since pre-examination normally takes about 10 days, this will cause a delay in the filing of the formal application (e.g., the filing date of an application requesting pre-examination will be later than an application that does not request pre-examination), which may have adverse consequences for novelty and inventive step.
Special regulations relating to 2019-nCoV
On February 17, 2020, NIPA, the State Administration for Market Regulation and National Medical Products Administration jointly issued the Ten Articles to Support Resumption of Work and Production, which clearly stipulated that prioritized examination can be applied to patent applications relating to prevention and treatment of 2019-nCoV (e.g., COVID-19).
In addition, the Guangdong Intellectual Property Office issued the Notice on Strengthening the Protection of Intellectual Property Rights during the Epidemic Prevention and Control Period for 2019-nCoV, which required the intellectual property protection centers in Guangdong to give a green light to accelerate the pre-examination of applications relating to the prevention and treatment of 2019-nCoV, and the Guangzhou Office of the NIPA to give priority to applications relating to prevention and treatment of 2019-nCoV. Although specific guidelines on applications related to 2019-nCoV have not been issued in other provinces, many intellectual property protection centers have given the green light for such applications to be prioritized and receive accelerated pre-examination. In fact, the time period for pre-examination of such applications has been significantly shortened. For example, there are cases where a notice of passing pre-examination is issued within 2-3 days and even on the same date that an application has been accepted.
This post was written by Lisa Mueller and Samuel Zhang of Zhong Lun.