After full discussion and rounds of revisions, SIPO released Administrative Measures for Priority Examination of Patent Applications（Draft for Comments） for public opinions.
Article 1 (Legislative goals)
In order to promote the optimization and upgrading of the industrial structure, push forward with the implementation of the national intellectual property rights strategy, and speed up the building of an innovation-oriented country, these Measures are formulated in accordance with relevant provisions of the Patent Law of the People's Republic of China and the Detailed Implementing Rules for the Patent Law of the People's Republic of China.
Article 2 (Scope of application)
The Measures are applicable for priority examinations of the following patent applications and cases: 1. patent applications at the stage of substantive examination; 2. utility model and design patent applications; 3. reexaminations of invention, utility model and design patent applications; and 4. Invalidations of invention, utility model and design patent applications. However, for priority examinations conducted in accordance with bilateral or multilateral agreements as well as those conducted in accordance with other regulations of SIPO, relevant provisions rather than these Measures shall apply.
Article 3 (Applicable conditions of applications and reexaminations)
Patent applications and patent reexaminations to which priority examination may be granted shall include: (1) those related to China’s key technical fields such as environmental protection, energy conservation, new-generation information technology, biotechnology, high-end equipment manufacturing, new energy, new materials, new energy vehicles and intelligent manufacturing; (2) those related to technical fields encouraged and supported by provincial and city (with districts) level governments; (3) those related to technical fields such as internet, big data and cloud computing, whose technologies and products are under rapid updating; (4) those that are ready to be or are being enforced by the applicants or reexamination petitioners, or those that could be proved to be enforced by others; (5) those that are filed in China for the first time and then filed in other countries or regions with the same subject matters; and (6) others that are of great significance for the interest of the State or the public and require priority examination.
Article 4 (Applicable conditions for patent invalidations)
Priority examinations could be granted to invalidation cases where: (1) for infringement disputes concerning invalidations, parties concerned have asked local IP offices for settlement, filed lawsuits before courts or arbitration applications before arbitral bodies; or (2) patents involved in invalidation cases are of great significance for the interest of the State or the public.
Article 5 (Applicants)
The filing of priority examinations for patent applications and reexaminations must be agreed by all members of applicants. The filing of priority examination for invalidation cases must be agreed by applicants of invalidation or all patentees. Local IP offices, people’s courts or arbitral bodies handling patent dispute cases could file priority examination application for the patent applications involved in invalidation cases.
Article 6 (Control over numbers of priority examinations)
The patent applications, patent reexaminations and invalidations to which priority examination is granted shall be determined by SIPO according to the circumstances such as the examination capacity, the number of patents granted in the previous year, and the number of pending applications of the current year.
Article 7 (Forms and time limits)
Patent applications for which priority examination is requested shall be electronic applications. For invention patents, applicants shall file for priority examination within 30 days from the receipt of Notice of Substantive Examination. For utility model and design patents, applicant shall file for priority examination within 30 days since the filing date. For patent reexamination or invalidation cases, applicants shall file for priority examination within 30 days since the filing date of patent reexamination or invalidation.
Article 8 (Formality requirements)
Applicants of priority examination requests for invention, utility model, design patent applications shall submit the following materials: (1) The Request for Priority Examination that has been examined by the intellectual property office of the relevant province with the opinions and the official seals of the said office indicated therein and affixed thereto; (2) A search report which accords with the prescribed requirements; and (3) relevant credentials Applicants filing for priority examination requests in accordance with Article 3 (5) shall submit Request for Priority Examination, search report which accords with the prescribed requirements and relevant credentials. Applicants filing for priority examination requests for patent reexamination and invalidation cases shall submit Request for Priority Examination that has been examined by the intellectual property office of the relevant province with the opinions and the official seals, as well as relevant credentials. However, in cases where priority examination has already been carried out during substantive or preliminary examination, opinions and the official seals of relevant province are not required for the Request for Priority Examination. Local IP offices, people’s courts and arbitral bodies shall provide their reasons before they file for priority examination for invalidation cases.
Article 9 (Search reports accords with the prescribed requirements)
The Search Reports in Article 8 of these Measures shall meet the following requirements: (1) full search of patent and non-patent documents of major countries, regions and organizations in the world; (2) list all reference documents that are related with the subject matters of the present application for future reference; and (3) make judgments on the patentability of all claims and provide relevant evidence and detailed reasons.
Article 10 (Notice of examination)
SIPO shall be responsible for accepting and reviewing the requests for priority examination, and promptly notify the applicants of the opinions on such review.
Article 11 (Closing time limit)
Upon acceptance of priority examination, SIPO shall close the case within the following time limits from the date of acceptance: (1) for invention patents, send out the first Office Action within 45 days from the application date of priority examination, and close the case within one year; (2) for utility model and design patent applications, close the case within two months; (3) for patent reexamination cases, close the case within 7 months; and (4) for invention and utility model invalidation cases, close the case within 5 months, for design patent invalidations, within 4 months.
Article 12 (Response requirements)
For applications undergoing priority examination, applicants shall make responses and corrections as soon as possible. The time limit for responding to the Office Action of invention patent is two months from the date when the Notice is sent out. The time limit for responding to the Office Action of utility model and design patent is 15 days from the date when the Notice is sent out.
Article 13 (Conditions for ceasing patent priority examination)
For a patent application undergoing priority examination, SIPO shall cease the priority examination, deal with the application as general one and notify the applicant where: (1) applicants amend the application documents in accordance with paragraph 1 and 2 of Article 51 of the Implement Regulations of Patent Law; (2) applicants fail to make reply within the time limits provided in Article 12 of these Measures; or (3) applicants submit false materials.
Article 14 (Conditions for ceasing priority examinations for invalidation cases)
For a patent reexamination or invalidation case undergoing priority examination, Patent Reexamination Board shall cease the priority examination, deal with the application as general one and notify the applicant where: (1) applicants of reexamination fails to reply within the time limits; (2) applicants of invalidation submits additional evidence and reasons; (3) patentee changes the Claims in ways other than deletion; (4) patent reexamination or invalidation procedure are suspended; (5) the handling of current case must rely on the examination results of other cases; or (6) the current case is regarded as major case of great complexity and has been approved by director of Patent Reexamination Board.
Article 15 (Authority of interpretation)
SIPO shall be responsible for the interpretation of these Measures.
Article 16 (Enforcement date)
These Measures shall become effective as of X X, 2017. The Administrative Measures for Priority Examination of Invention Patent Applications enforce on August 1, 2012 will be repealed simultaneously.