Introduction to Prioritized and Expedited Patent Examination Procedures (Part One) Chapter of China
By Han-Mei Tso
In today’s business world, companies often have to face fierce commercial competition with rapidly developing technologies. Thus, the ability to obtain patents quickly provides a clear advantage over the competition. Moreover, patents can enhance corporate value by contributing to a comprehensive patent portfolio, while also generating interest from potential investors. In this context, this issue of Osha Liang Insights and subsequent issues will provide an overview of prioritized and expedited patent examination procedures provided by China, the United States, Japan and Europe. Accordingly, business practitioners can utilize these different procedures to form effective global IP strategies. For this month, Osha Liang Insights will focus on the patent prioritized examination procedures provided by China.
The State Intellectual Property Office (now the China National Intellectual Property Administration (“CNIPA”) officially implemented the Administrative Measures for the Prioritized Examination of Patents (the “AMPE”) on August 1, 2017. Compared to prior procedures, the AMPE has extended prioritized examination to more types of patent examination proceedings as well as reexamination and invalidation proceedings. In particular, the requirements and procedures of prioritized patent examination in China are described below.
Patent Matters Applicable for Prioritized Patent Examination
- Utility patent (i.e. invention patent in China) applications in the substantive examination stage;
- Utility model applications and design applications;
- Reexamination of applications for utility patents, utility models, and design patents; and
- Invalidation proceedings of utility patents, utility models, and design patents.
In accordance with Article 2 of the AMPE, if prioritized examination is requested based on a bilateral or multilateral agreement signed by the CNIPA with foreign patent examination authorities, such prioritized examination should be handled in accordance with the provisions of the agreement, and the AMPE’s rules shall not apply. For instance, where a patent applicant requests accelerated examination based on the Patent Prosecution Highway (PPH) program, the request and examination procedures should be governed by the rules set forth in the PPH program instead of the AMPE.
Eligibility and Conditions for Prioritized Examination
Patent applications and reexaminations must satisfy at least one of the following subject matter eligibility requirements for prioritization:
- The application involves the technical fields of energy conservation and environmental protection, new generation of information technology, biology, high-end equipment manufacturing, new energy, new materials, new energy vehicles, intelligent manufacturing and other key national developing industries.
- The application involves industries encouraged by the Chinese government at the provincial level and the districted city level.
- The application involves Internet technology, big data, cloud computing or other technical areas where the technologies or products are advancing rapidly.
- The patent applicant or petitioner for reexamination (1) has devoted resources to preparation of using the invention, (2) is already practicing the invention, or (3) has obtained evidence proving another party is practicing his or her invention.
- The patent application was first filed in China and has a counterpart patent application with the same subject matter filed in a foreign jurisdiction.
- The patent application has great importance for Chinese national interests or public welfare such to require prioritized examination.
Invalidity proceedings must satisfy at least one of the following subject matter eligibility requirements for prioritization:
- For infringement disputes on a patent involved in an invalidation proceeding, the parties have requested the local Intellectual Property Office for resolution, appealed to the People’s Court, or requested arbitration and mediation.
- The patent involved in the invalidation proceeding is of great significance to national interests or public welfare.
Prioritized examination for patent applications requires:
- an application sheet for prioritized examination;
- materials of the prior art or the available design information and relevant certificates; and
- the application for prioritized examination signed with recommendations by relevant department of the State Council or a provincial Intellectual Property Office, except for the matter specified and prescribed by Paragraph 5 of Article 3 of the AMPE where the patent application pending examination first filed in China has a counterpart patent application with the same subject matter filed in a foreign jurisdiction.
Prioritized Examination for Reexamination and Invalidation requires:
- an application sheet for prioritized examination and relevant certificates; and
- the application for prioritized examination signed with recommendations by relevant department of the State Council or a provincial Intellectual Property Office, except for reexamination cases that have gone through prioritized examination in the substantive examination or the preliminary examination stage.
- For a utility patent application, the first Office Action should be issued within 45 days, and the prosecution should conclude within a year.
- For a utility model and design application, the prosecution should conclude within 2 months.
- For patent reexamination, the proceeding should conclude within 7 months.
- For invalidation of utility patents and utility models, the proceeding shall conclude within 5 months.
- For invalidation of design patents, the proceeding should conclude within 4 months.
Termination of Prioritized Examination
For patent applications, the CNIPA may cease prioritized examination, proceed with ordinary prosecution, and notify the applicant under one of the following circumstances:
- The applicant submits voluntary amendments to the application document after the request for prioritized examination is approved.
- The applicant responds to an Office Action later than the time limit prescribed by the AMPE, which is 2 months for an invention application and 15 days for a utility model and design application.
- The applicant submits false materials to the CNIPA.
- The application is found during prosecution to be an abnormal patent application.
For reexamination and invalidation proceedings, the Patent Reexamination Board may cease prioritized examination, proceed with ordinary prosecution, and notify the applicant under one of the following circumstances:
- The reexamination petitioner delays a response.
- After a request for prioritized examination is approved, the petitioner for invalidation submits additional evidence and reasons for invalidation or reexamination.
- After a request for prioritized examination is approved, the patentee amends the claims in a manner other than by deletion of a claim.
- The patent reexamination or invalidation proceeding is terminated.
- Review of the case relies on a result from another case.
- The case is designated as a difficult case by the Director of the Patent Reexamination Board.
The AMPE is no longer limiting prioritized examination to utility patent applications as the previous rules did. In contrast, the AMPE is promoting prioritization in order to encourage the development of new technologies and new industries in China as well as to increase innovation.
From the perspective of the foreign patent applicants, the AMPE is friendlier than previous rules governing prioritization. In the previous rules, requests for prioritized examination required review opinions provided and signed by the government of a province, autonomous region or municipality with its official seal. However, foreign applicants are not subject to administration of any local government in China. As a result, although the previous rules did not directly exclude foreign applicants from requesting prioritized examination, the implementation of such rule indirectly eliminated foreign applicants from partaking in prioritization examination.
Under the AMPE, the difficulty imposed on foreign applicants has decreased. Specifically, Article 8 of the AMPE has excluded the circumstance set forth in Paragraph 5 of Article 3 of the AMPE. Accordingly, if the patent application pending examination was first filed in China and has a counterpart patent application filed in a foreign jurisdiction, written recommendations signed by the State Council or the Provincial Intellectual Property Office may be waived when requesting patent prioritized examination.
Nevertheless, if a patent application of a foreign applicant was not first filed in China, the foreign applicant may still have to deal with the hassle to obtain recommendations provided and signed by the Chinese government authority in order to satisfy the AMPE conditions for prioritized examination. In the situation where a foreign applicant has trouble obtaining the government’s written and signed recommendations, the only way to request prioritize examination may be through a bilateral or multilateral agreement between the CNIPA and a foreign patent examination authority. However, the effectiveness of these bilateral or multilateral agreements may not be as strong as the AMPE particularly in view of the timeline for completing examination.