China National Intellectual Property Administration (CNIPA) has implemented the Administrative Measures for Prioritized Examination of Patent since August 1, 2017.
Applicable range
This Measures is applicable to the following cases:
- patent applications for invention at the substantive examination stage;
- patent applications for utility model or design;
- reexamination procedure of patent applications for invention, utility model or design; and
- invalidation proceeding of patent for invention, utility model or design.
Meanwhile, this Measures is not applicable when a prioritized examination is carried out in accordance with bilateral or multilateral agreements between CNIPA and Intellectual Property Office of other countries or regions (e.g. PPH).
Applicable situations
A request for prioritized examination can be submitted in one of the following situations:
(i) if the patent applications for invention, utility model or design, or reexamination procedure of patent applications for invention, utility model or design meet one of the following situations:
- involved in national key development industries, including energy conservation and environmental protection, new generation of information technology, biology, high-end equipment manufacturing, new energy, new materials, new energy vehicles, intelligent manufacturing, etc.;
- involved in industries that are encouraged by provincial governments and municipal governments;
- involved in the field including internet, big data, cloud computing, etc., in which update of the technology or product is fast;
- applicant of the patent application or requester of the reexamination is ready to implement or has already begun to implement the technology involved in the patent application, or there is evidence that others are implementing the technology involved in the patent application;
- submitting a subsequent patent application to other countries or regions with the same subject matter as a patent application submitted to the CNIPA for the first time.
(ii) if the invalidation proceeding of patent for invention, utility model or design meet one of the following situations:
- infringement disputes over patents involved in invalidation proceeding occurred, and the parties to the patent have requested the local IP office to process, has filed a lawsuit with the court or has requested arbitration mediation organization to mediate arbitration;
- the patents involved in the invalidation proceeding are of great significance to the national interest or the public interest.
Advantages
If the request for prioritized examination is approved by CNIPA, from the date of approval the following rules regarding deadlines are enforced:
- a First Office Action of a patent applications for invention will be issued within forty-five days, and the application for invention will be closed within one year;
- patent applications for utility model and design will be closed within two months;
- reexamination procedure of patent applications for invention, utility model or design will be closed within seven months;
- invalidation proceeding of patent for invention or utility model will be closed within five months; and
- invalidation proceeding of patent for design will be closed within four months.
Disadvantages
(i) shortened period for response
- the time limit for the applicant to response to the Office Action of the patent applications for invention is two months from the date of issuance of the Office Action;
- the time limit for the applicant to response to the Office Action of the patent applications for utility model or design is fifteen days from the date of issuance of the Office Action.
(ii) for the patent applications, the CNIPA could terminate the process of prioritized examination and continue the examination in accordance with the normal procedure in one of the following situations:
- after approval of the request for prioritized examination, the applicant voluntarily amended the claim(s) in accordance with the Article 51.1 or 51.2 of the Implementing Rules of the Patent Law;
- the response submitted to the CNIPA is overdue;
- the applicant submits false documents;
- the application was found to be abnormal during the examination procedure.
(iii) for the reexamination procedure or invalidation proceeding, the CNIPA could terminate the process of prioritized examination and continue the examination in accordance with the normal procedure in one of the following situations:
- in the reexamination procedure, the response submitted to the CNIPA is overdue;
- after approval of the request for prioritized examination, the requester of the invalidation proceeding adds additional evidence and reasons;
- after approval of the request for prioritized examination, the patentee amends the claim(s) in a manner other than deletion;
- the reexamination procedure or the invalidation proceeding was suspended;
- the trial relies on the findings of other cases;
- difficult case and approved by the Director of the Patent Reexamination Board.