Administrative Measures for Patent Priority Examination
2017.6.27
Yenchu Chen
On June 27, 2017, the State Intellectual Property Office (the "SIPO") promulgated the Administrative Measures for Patent Priority Examination (the "Measures"), which will go into effect on August 1, 2017. The Measures are promulgated to promote the optimization and upgrade of industrial structure, enhance the strategic implementation of intellectual property and improve the patent examination procedure.
Consisting of 15 articles, the Measures are enacted in accordance with the Patent Law and the Implementation Regulations of the Patent Law. In particular, Articles 2 through 4 provide for the scope and circumstances of applicable patent cases; Articles 5 through 8 stipulate the application conditions, examination volume, how to apply and the materials to be submitted; Articles 9 through 11 provide for the period in which the SIPO accepts an examination application and the deadlines for concluding a case as well as the response and supplements by the applicant ; and Articles 12 through 13 stipulate that the SIPO may suspend the examination procedure and follow the ordinary procedure for a priority examination case.
Pursuant to the Measures, the priority examination system covers, for the substantive examination stage, the examination of invention patent applications, utility model and design patent applications, the re-examination of invention, utility and design patents, and the invalidation of invention, utility model and design patent cases, thereby forming a comprehensive patent priority examination system.
The Measures streamline and optimize procedures and simplify the formalities for priority examination to make it convenient for an applicant to apply for priority examination. To apply for priority examination of a patent application, the applicant is required to submit a priority examination application reviewed and sealed by a provincial intellectual property office along with a recommendation opinion signed by that intellectual property office, a patent search report that meets the relevant requirements and the relevant supporting documents. For patent re-examination and invalidation cases, a party is required to submit a priority examination application which was reviewed and sealed by a provincial intellectual property office along with a recommendation opinion signed by that intellectual property office, as well as the relevant supporting documents. For a patent re-examination case in which priority examination was conducted in the substantive examination or preliminary examination procedure, there is no need to submit the recommendation opinion of a local intellectual property office.
The Measures also set the corresponding reply and closing deadlines for different patent types and procedures. For an invention patent application, the first notification of office action should be issued in 45 days and the application should be concluded in one year. For a utility patent or design patent application, the application should be concluded in two months. A patent re-examination application should be concluded in seven months. A case involving the invalidation of an invention patent or utility model patent should be concluded in five months, while a design patent invalidation case should be concluded in four months.
Yenchu Chen
On June 27, 2017, the State Intellectual Property Office (the "SIPO") promulgated the Administrative Measures for Patent Priority Examination (the "Measures"), which will go into effect on August 1, 2017. The Measures are promulgated to promote the optimization and upgrade of industrial structure, enhance the strategic implementation of intellectual property and improve the patent examination procedure.
Consisting of 15 articles, the Measures are enacted in accordance with the Patent Law and the Implementation Regulations of the Patent Law. In particular, Articles 2 through 4 provide for the scope and circumstances of applicable patent cases; Articles 5 through 8 stipulate the application conditions, examination volume, how to apply and the materials to be submitted; Articles 9 through 11 provide for the period in which the SIPO accepts an examination application and the deadlines for concluding a case as well as the response and supplements by the applicant ; and Articles 12 through 13 stipulate that the SIPO may suspend the examination procedure and follow the ordinary procedure for a priority examination case.
Pursuant to the Measures, the priority examination system covers, for the substantive examination stage, the examination of invention patent applications, utility model and design patent applications, the re-examination of invention, utility and design patents, and the invalidation of invention, utility model and design patent cases, thereby forming a comprehensive patent priority examination system.
The Measures streamline and optimize procedures and simplify the formalities for priority examination to make it convenient for an applicant to apply for priority examination. To apply for priority examination of a patent application, the applicant is required to submit a priority examination application reviewed and sealed by a provincial intellectual property office along with a recommendation opinion signed by that intellectual property office, a patent search report that meets the relevant requirements and the relevant supporting documents. For patent re-examination and invalidation cases, a party is required to submit a priority examination application which was reviewed and sealed by a provincial intellectual property office along with a recommendation opinion signed by that intellectual property office, as well as the relevant supporting documents. For a patent re-examination case in which priority examination was conducted in the substantive examination or preliminary examination procedure, there is no need to submit the recommendation opinion of a local intellectual property office.
The Measures also set the corresponding reply and closing deadlines for different patent types and procedures. For an invention patent application, the first notification of office action should be issued in 45 days and the application should be concluded in one year. For a utility patent or design patent application, the application should be concluded in two months. A patent re-examination application should be concluded in seven months. A case involving the invalidation of an invention patent or utility model patent should be concluded in five months, while a design patent invalidation case should be concluded in four months.
