On 19 June 2012, the State Intellectual Property Office (“SIPO”) issued the Administrative Measures on Prioritized Examination of Patent Applications (the "Measures"), which will come into effect on 1 August 2012. The Measures implement a scheme that allows for prioritized examination of certain types of invention patents.
There are two major differences between the Measures and the draft version, which was circulated for public comment early this year. The Measures now provide a specific time frame for the completion of examination of a prioritized patent application. According to Article 2 of the Measures, once SIPO agrees to conduct prioritized examination of a patent application, the examination will be completed within one year. The Measures also narrow down its scope of application to invention patents, whereas the draft version used the word "patents" rather than "invention patents" in its title.
Eligible Patent Applications
According to Article 4 of the Measures, prioritized patent examination can be granted for invention patent applications that fall into the following categories:
- Important patent applications in technical areas concerning energy conservation and environment protection, new generation information technology, biology, high-end equipment manufacturing, new energy, new materials, new energy automobiles;
- Important patent applications that facilitate "green development", such as technologies relating to low carbon emission or conservation of resources;
- Patent applications for the same invention first filed in China and then filed in other countries or regions; and
- Other patent applications, which are important for national or public interests that require prioritized examination.
Where SIPO has signed a bilateral or multi-lateral agreement with a patent office of another country that includes prioritized examination procedures, such agreements take precedence before the Measures. For example, the pilot patent prosecution highway ("PPH") programs recently implemented by SIPO:
- PPH with the Japan Patent Office – commenced on 1 November 2011 for one year;
- PPH with the USPTO – commenced on 1 December 2011 for one year;
- PPH with the German Patent and Trademark Office – commenced on 23 January 2012 for two years;
- PPH with the Korean IP Office – commenced on 1 March 2012 for one year.
- PPH with the Russian IP Office – commenced on 1 July 2012 for one year.
In addition to falling into the categories listed in Article 4, applications shall also meet the following requirements:
- The application must be filed electronically (Article 6);
- The applicant must request a substantive examination (Article 6);
- The applicant must submit an "Application form for Prioritized Patent Examination", which is endorsed by a local SIPO branch at the provincial level (i.e., of a province, autonomous region, or municipality directly under the central government) (Article 7); and
- The applicant must submit a patent search report issued by a qualified entity, or a Chinese translation of a patent search report and patent examination results produced by a patent examination office of another country or region (Article 7).
According to Articles 10 and 11 of the Measures, once SIPO grants a request for prioritized examination, it should issue a first office action within 30 days of the grant. The patent applicant should then respond to the office action within 2 months. Otherwise, the patent application will lose the prioritized examination status and be treated as a regular application.
- It is not defined what is regarded as an important patent application. The Measures provide that the patent should be important to be eligible for a prioritized examination (Article 4). It remains to be seen in practice which technologies are accepted as important in this sense.
- The Measures do not provide clear guidance on how a SIPO branch at the provincial level should determine whether to endorse an application for prioritized patent examination, nor how quickly this determination should be made.
- It is not clear from the Measures whether qualified entities, which issue the required patent search report, need to be accredited by the SIPO, or whether a patent agency firm will automatically be regarded as such. Article 8 of the Measures merely states that the entity should have patent and non-patent databases that can be used to conduct patent searches as specified in the Patent Examination Guidelines. The staff of the entity should have a technical background and adequate training in patent practices and patent searches.
- The Measures do not specify how many requests for prioritized examination will be granted each year. Instead, Article 5 states that this will be determined by the SIPO depending on the examination capacity in the respective technical areas, as well as the number of patent grants in the previous year, and the number of pending applications for the current year.
On the one hand, invention patent applicants, both foreign and Chinese, can expect an earlier grant than the average three-to-five years, and should particularly welcome the mechanism for a prioritized examination. On the other hand, several issues remain to be clarified as to how the Measures will be applied in practice. We will continue to follow any new developments in this area and report on how these issues are addressed.