China’s State Intellectual Property Office (SIPO) has released new Administrative Measures for Prioritized Examination of Patent Applications (“the Measures”) which provide broader conditions for prioritized examinations, but also include new entitlements for foreign applicants.
The new Measures which came into effect on 1 August 2017, differ from the 2012 Measures as they apply not only to the prosecution of all types of patent applications (i.e. invention, utility model and design application), but also to the re-examination and invalidation proceedings. Furthermore, the Measures offer an entitlement for the foreign applicant to request prioritized examination under the following conditions:
- The application is filed in other countries or regions after being filed in China for the first time
- The invalidation proceeding is involved in infringement disputes, and interested parties have asked local IP offices for administrative action, instituted legal proceedings before Court, or requested for arbitration or mediation
SIPO will use its discretion to determine the quantity of cases for prioritized examination, taking into account the examination capacity of each technical field, the number of patents granted in the last year and the number of pending patent applications in the current year. Upon approval of the request, the cases will be concluded according to the following timeframe:
|Type of application||Prosecution||Re-examination||Invalidation proceeding|
|Invention||1 year while the First Office Action shall be issued within 45 days||7 months||5 months|
|Utility Model||2 months||7 months||5 months|
|Design||2 months||7 months||4 months|
The petitioner of the prioritized examination is required to respond to the Notifications issued by the relevant authorities in a timely manner. The time limit specified in the Notifications cannot be extended. Furthermore, except for deletion of the claims, the applicant is not allowed to make voluntary amendments on the claims after the request is approved. Otherwise, the case shall be returned to the normal examination procedure.
There is no official fee for the prioritized examination.