On June 28, 2017, the State Intellectual Property Office of China (SIPO) released new Administrative Measures for Prioritized Examination of Patents (hereinafter referred to as “Measures”). The “Measures” takes effect as of August 1, 2017. Applicants at home and broad as well as other relevant parties may take advantage of the “Measures” to get the examination results of relevant patent applications or patents faster. For convenience of understanding and reference, the contents thereof are briefly presented as follows.
(I) Application Scope of Prioritized Examination
The “Measures” in Article 2 stipulates the application scope of prioritized examination, covering patent applications for invention at the stage of substantive examination; utility model and design patent applications; reexamination cases of invention, utility model and design patent applications; and invalidation cases of invention, utility model and design patent applications. Therefore, the systemic and integrated rules for the prioritized examination of patent have been formed. It needs to be noted that said “measures” shall not apply to the patent applications under prioritized examination according to the Patent Prosecution Highway (PPH) procedures.
(II) Applicable Conditions of Prioritized Examination
The “Measures” in Article 3 stipulates that patent applications and patent reexamination cases for which prioritized examination may be requested mainly include those related to technical fields encouraged and supported by national, provincial and city level governments, those related to technical fields in which techniques or products are refreshed at a high rate, those that are ready to be or are being exploited by the applicants, or those that can be proved being exploited by others, and those that are filed in China for the first time and then filed in other countries or regions with the same subject matters. The “Measures” in Article 4 stipulates patent invalidation cases for which prioritized examination may be requested, which mainly include the cases involving infringement disputes of the patent at issue, and the parties concerned have asked local IP offices for settlement, filed lawsuits before people’s courts or lodged arbitration or mediation requests before arbitration or mediation organizations. Moreover, the “Measures” in both Articles 3 and 4 stipulates that prioritized examination may be granted to cases of great significance for the interest of the State or the public.
(III) Formalities for Requesting Prioritized Examination
The “Measures” in Article 5 stipulates that the petitioners who may request prioritized examination mainly include the patent applicants, patentees or petitioners for invalidations. Where there is more than one right owner, the filing of prioritized examination requests must be agreed by all of them. In case of infringement disputes, local IP offices, people’s courts or arbitration or mediation organizations in charge of the patent dispute case may file prioritized examination request for the invalidation case of the patent at issue.
The “Measures” in Article 8 stipulates the documents required for filing a prioritized examination. In particular, the applicant is asked to submit the Request for Prioritized Examination with the recommendation opinions and the official seals provided by the relevant departments of the State Council or the intellectual property office at the provincial level. Nevertheless, in cases where prioritized examination is filed for an application that is filed in China for the first time and then filed in other countries or regions with the same subject matters, the opinions with official seals by the relevant departments of the State Council or the intellectual property office of the relevant province are not required. As to a patent application for which a prioritized examination is requested, the patent applicant further needs to provide prior art or existing design information materials; or relevant documents as evidence. As to the prioritized examination request for an invalidation case involving infringement dispute, relevant documents as evidence shall be provided.
(IV) Procedures for Handling Prioritized Examination
The “Measures” in Article 10 stipulates that under the circumstances where the prioritized examination is approved, the SIPO shall meet the following time limits from the date of the approval: for an invention patent application, issue the first Office Action within 45 days, and close the case within one year; for a utility model or a design patent application, close the case within two months; for a patent reexamination case, close the case within 7 months; for an invention or utility model invalidation case, close the case within 5 months; and for a design patent invalidation case, close the case within 4 months. Correspondingly, the time period for the applicants to reply to the office actions is shortened. For an invention patent application, a response shall be made within two months from the date of issuance of the office action; for a utility model or design patent application, a response shall be made within 15 days from the date of issuance of the office action; and for a reexamination or invalidation case, a response shall still be made within one month from the date of receipt of the office action. Nevertheless, if the petitioner requests a time extension for responding to an office action or a notification, the prioritized examination procedure shall be ceased, and the case shall be examined according to ordinary procedure. In addition, as to a patent application in the process of prioritized examination, if the applicant makes amendments on his own initiative, the prioritized examination procedure shall be ceased as well, and the case shall be examined according to ordinary procedure. As to an invalidation case in the process of prioritized examination, where the petitioner for invalidation supplements arguments and/or evidence, or the patentee amends the claims in a manner other than deletion, the prioritized examination procedure shall be ceased, and the case shall be examined according to ordinary procedure. Prioritized examination on a reexamination 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 approved by the director of the Patent Reexamination Board.
This new “Measures” embodies the efforts made by the SIPO in serving development of innovative economy. Meanwhile, the SIPO also shows careful attitude in carrying out prioritized examination. It is stipulated in the “Measures” that the number of prioritized examinations shall be determined by the SIPO according to conditions such as the examination capability in different technical fields, the number of granted patents in the last year, and the number of cases to be examined in the present year.