With the aim to promote the optimization and upgrading of industrial structure, to accelerate the implementation of intellectual property strategies of the state and the construction of an innovation-oriented country, and to improve patent examination procedure, Measures are formulated in accordance with the provisions of the Patent Law of the People's Republic of China and the Implementation Regulations of the Patent Law of the People's Republic of China.
The Measures apply to the prioritized examination for the following patent applications or cases:
1) patent applications at the stage of substantive examination;
2) Utility model and design patent applications;
3) Reexamination of invention, utility model and design patent applications; and
4) Invalidation of invention, utility model and design patents.
Prioritized examinations based on bilateral or multilateral agreements signed by SIPO and patent examination offices of other countries or regions shall be conducted in accordance with the relevant regulations and are not subject to the Measures.
Requests for prioritized examination can be made for patent applications and patent reexaminations constituting the following circumstances:
1) relating to China’s key industries for development, such as energy conservation, environmental protection, new-era information technology, biotechnology, high-end equipment manufacturing, new energy, new materials, new energy vehicles and intelligent manufacturing;
2) relating to the key industries encouraged and supported by the governments at provincial and municipal (with districts) levels;
3) relating to internet, big data, and cloud computing, in which fields technologies and products are under rapid updating;
4) those that are ready to be or are being implemented by the patent applicants or reexamination petitioners, or those that can be proved as being implemented by others;
5) those that are first filed in China and then filed in other countries or regions with the same subject matters; and
6) others that are of great significance to the national interest or public interest and require prioritized examination.
Requests for prioritized examination can be made for invalidation cases where:
1) the parties concerned have requested local IP offices for enforcement, filed litigation before courts or arbitration applications before arbitration mediation organizations, for infringement disputes concerning the patent at issue,
2) the patents at issue are of great significance to the national interest or public.
Requests for prioritized examination of patent applications and reexaminations shall be consented to by all applicants concerned. Applications for prioritized examination of invalidation cases shall be consented to by all petitioners or all patentees.
Local IP offices, people’s courts or arbitration mediation organizations handling patent infringement dispute cases may request prioritized examination of invalidation case concerning the patent at dispute.
The amount of patent applications, patent reexamination and invalidation cases subject to prioritized examination shall be determined by SIPO according to the circumstances including examination capacity in various technical fields, the number of patents granted in the previous year, and the number of pending cases of the current year.
The patent applications or patent reexamination cases requested for prioritized examination shall be submitted electronically.
Where an applicant requests for prioritized examination on invention, utility model or design patent applications, he/she shall submit a written request for prioritized examination, as well as information materials and supporting documents concerning prior arts or prior designs; except for the condition prescribed in Item 5, Article 3 of these Measures, a request for prioritized examination shall be signed off with recommending opinions by a related department of the State Council or an intellectual property office at provincial level with opinions.
Where a party requests for prioritized examination of a patent reexamination application or an invalidation proceeding, he/she shall submit a written request and related supporting documents; except for patent reexaminations that had been treated with priority examination at the stage of substantive examination or preliminary examination, a request for prioritized examination shall be signed off with recommending opinions by a related department of the State Council or an intellectual property office at provincial level.
Where a local intellectual property office, a people 's court or an arbitration mediation organization requests for prioritized examination of an invalidation declaration case, it shall submit a written request and state the reasons.
After receiving and reviewing a request for prioritized examination, SIPO shall promptly inform the requesting party of their opinion.
Where SIPO approves to conduct a prioritized examination, the examination shall, from the date of approval, be concluded within the following timeframe:
1) For invention patent applications, the first office action issued within 45 days, and examination completed within 1 year;
2) For utility model or design patent application, examination completed within 2 months;
3) For patent reexamination applications, examination completed within 7 months;
4) For invalidation of invention or utility model patents, examination completed within 5 months; for invalidation of design patents, examination completed within 4 months.
For a patent application under prioritized examination, the applicant shall make reply or amendment as soon as possible. The time limit for replying to an office action concerning an invention patent is 2 months from the date of issuance of the notice, and for replying to an office action concerning a utility model application or a design patent application is 15 days from the date of issuance of the notice.
For a patent application under prioritized examination, SIPO may cease the prioritized examination procedure and resume ordinary procedure and notify the party requesting prioritized examination in a timely manner under any one of the following circumstances:
1) where the applicant makes amendment to the application in accordance with Item 1 or 2, Article 51 of the Implementation Regulations of the Patent Law, after the request for prioritized examination is approved;
2) where the applicant makes reply after the time limit prescribed in Article 11 of these Measures;
3) where the applicant has submitted fraudulent materials;
4) where the application is found to be an abnormal patent application during examination.
For a reexamination or invalidation proceeding under prioritized examination, the Patent Reexamination Board may cease the prioritized examination procedure and resume ordinary procedure and notify the party requesting prioritized examination in a timely manner under any one of the following circumstances:
1) where the reexamination applicant requests extension for reply;
2) where the invalidation petitioner supplements evidences and grounds after the request for prioritized examination is approved;
3) where the patentee modifies the claims by ways other than deletion, after the request for prioritized examination is approved;
4) where the patent reexamination or invalidation proceeding is suspended;
5) where the examination of the case relies on the conclusion of other cases;
6) where, for a complicated case, approval to cease prioritized examination is given by Patent Reexamination Board Director.
SIPO is responsible for the interpretation of these Measures.
These Measures shall enter into force as of August 1, 2017. The “Administrative Measures for Prioritized Examination of Invention Patent Applications” effective since August 1, 2012 is abolished at the same time.