On June 28 2017 the State Intellectual Property Office (SIPO) released the new Administrative Measures for the Prioritised Examination of Patents, which took effect on August 1 2017. Applicants in China and abroad, as well as other relevant parties, can take advantage of the measures to obtain the examination results of relevant patent applications or patents more quickly.
Article 2 of the measures stipulates that prioritised examinations can be sought for:
- inventions at the substantive examination stage;
- utility model and design applications;
- re-examinations of invention, utility model and design applications; and
- patent invalidation cases.
Notably, the measures do not apply to patent applications that are undergoing a prioritised examination according to the Patent Prosecution Highway procedures.
According to Article 3 of the measures, the patent applications and re-examination cases for which a prioritised examination may be requested mainly concern:
- technical fields that are encouraged and supported by national, provincial and city governments;
- technical fields in which techniques or products advance quickly;
- goods that are ready to be or are being exploited by the applicant or which are being exploited by others (as can be proven); and
- applications which were first filed in China and then filed in other countries or regions with the same subject matter.
According to Article 4 of the measures, a prioritised examination may be requested for a patent invalidation case where:
- the patent at issue is involved in an infringement dispute; and
- the parties concerned have asked a local IP office for a settlement, filed a lawsuit before the people’s courts or lodged an arbitration or mediation request before an arbitration or mediation organisation.
Further, Articles 3 and 4 of the measures stipulate that a prioritised examination may be granted in cases that are of great interest for the state or the public.
Article 5 stipulates that the following petitioners may request a prioritised examination:
- patent applicants;
- patentees; and
- petitioners, in the case of invalidations.
Where there is more than one rights holder, they each must agree to the filing of a prioritised examination request. In the case of an infringement dispute, the local IP office, people’s court or arbitration or mediation organisation in charge of the case may file a prioritised examination request for the patent at issue.
Article 8 of the measures stipulates the documents required for filing a prioritised examination. In particular, applicants must submit with their request for prioritised examination the recommendation opinions, with official seals, of the relevant:
- State Council department, at the national level; or
- IP office, at the provincial level.
Where the prioritised examination request is filed for an application that was first filed in China and subsequently in other countries or regions with the same subject matter, the opinions of the relevant State Council department or provincial IP office are not required. As regards patent applications for which a prioritised examination is requested, the applicant must also provide information regarding the prior art or existing designs and other relevant documents as evidence. Relevant documents must also be provided as evidence in the case of prioritised examination requests for invalidation cases in the case of an infringement dispute.
Article 10 of the measures stipulates that where a prioritised examination is approved, the SIPO must meet the following time limits:
- For invention patent applications, the SIPO must issue the first office action within 45 days and close the case within one year from the date of approval of the prioritised examination request.
- For utility model and design patent applications, the SIPO must close the case within two months from the date of approval of the prioritised examination request.
- For patent re-examination cases, the SIPO must close the case within seven months from the date of approval of the prioritised examination request.
- For an invention or utility model invalidation case, the SIPO must close the case within five months from the date of approval of the prioritised examination request.
- For design patent invalidation cases, the SIPO must close the case within four months from the date of approval of the prioritised examination request.
Similarly, the times in which applicants must reply to office actions have been shortened as follows:
- For invention patent applications, a response must be made within two months from the date of issuance of the office action.
- For utility model and design patent applications, a response must be made within 15 days from the date of issuance of the office action.
For re-examination or invalidation cases, a response must still be made within one month from the date of receipt of the official notification.
Nonetheless, if the petitioner requests an extension for responding to an office action or a notification, the prioritised examination procedure will be ceased and the case will be examined according to ordinary procedure. Similarly, as regards patent applications undergoing a prioritised examination, if the applicant makes amendments on its own initiative, the prioritised examination procedure will be ceased and the case will be examined according to ordinary procedure. In the case of an invalidation case undergoing a prioritised examination, where the petitioner for invalidation supplements arguments and evidence, or the patentee amends the claims in a manner other than deletion, the prioritised examination procedure will be ceased and the case will be examined according to ordinary procedure. A prioritised examination in a re-examination case and an invalidation case may also be ceased if:
- the case is suspended;
- the examination relies on the examination conclusion of other cases; or
- the case is complicated and has been approved by the director of the Patent Re-examination Board.