Prioritized Examination of Chinese Patent Applications

[Arthur Tan-Chi Yuan]

Following the footsteps of the USPTO, State Intellectual Property Office has also began implementing rules* on a prioritized patent examination program starting on August 1, 2012.

The program, however, excludes the applications on invention patent applications that are subject to bi-lateral or multi-lateral agreements between SIPO and other patent offices of other countries or regions.

The goal is to complete the examination of the case (either resulting in allowance or final rejection) in one year, starting from the date of the grant of the prioritized examination petition/request. 

The rules apply only to invention patent applications and are applicable to the following:

  1. energy saving and environmental conservation; next generation communications; biotechology; manufacture of high-end equipment; new energy source; new materials; and vehicles with new energy source.
  2. low-carbon emission, energy conservation and related green technology development;
  3. the first Chinese application on the same subject matter if counterpart applications were also filed in other country or region; or
  4. having significant benefit to the public or the country.

Currently, there is no quota of how many prioritized examinations will be approved as the number is to be determined based on capabilities of different technical areas of SIPO, as well as statistics from patent issuance from the prior year as well as pending applications.

Moreover, the application must be electronically filed to be eligible to be considered in this program.  Also, if no request for substantial examination has been filed, the applicant shall request substantial examination upon participating in the program.

To participate in the program, applicant shall file:

  1. an application for prioritized examination; and
  2. a search report issued by entities that meet the patent search requirements, or a search report with results and Chinese translation thereof issued from patent examination entities of another country or region.

The "patent search requirements" above mean:

  1. meeting requirements for searching of patent and non-patent literature according to "Guidelines for Examination" [Note: the Chinese eqiuvalent of MPEP];
  2. having searchers that possess technical background, received patent practical trainings and search trainings; and
  3. being capable of searching prior art in relevant technical fields according to the "Guidelines for Examination" for the prioritized examination.

Upon receiving the application from the applicant, SIPO will review the application and notify the applicant accordingly.  Once approved, SIPO shall process it expeditiously and shall issue an office action within 30 working days from the day of approval.  The applicant has 2 months, without any extension, to respond to the office action.  If the applicant fails to respond within two months, SIPO shall terminate the prioritized examination and shall enqueue the application to normal examination.

 

Note:

  1. *The tranlsation of the rules from the original in Chinese is an unofficial version and is author's own work.  Any error thereof shall not be attributed to the original.
  2. It appears that the rules do not specify how long it takes for SIPO to approve the request once it receives the application.  However, it certainly is another program for one to maximize the 20-year patent term in China when there is no PTA or PTE in China.
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