The State Intellectual Property Office, as Order of the Office No.76, issued the Administrative Rules for Prioritized Patent Examination (PPE) by the end of June and became effective on August 1st 2017.
Aiming to empower advancement of innovations in trades and to facilitate the state-wide industrial transformation, SIPO initiated and implemented a fast-track examination program for invention patent applications since 2012. The program’s works have been routinely reviewed. Now the old rules were deemed to be neither efficient nor sufficient to fully serve China’s rapidly growing industrial demands. The newly promulgated PPE is a substitute for the old rules as soon as it was put into force.
According to PPE, cases eligible for prioritization are more than inventions patent applications. They include:
- Invention patent applications;
- Utility model and design patent applications;
- Re-examination for invention, utility model, and design patent applications; and
- Invalidation for invention, utility model, and design patents.
Patent application or re-examination can be accelerated if they meet any of the qualifications as follows:
- Technology involving energy conservation and environmental protection, new energy, next-generation information technology, biotechnology, high-end device manufacture, new material, new-energy automobile, smart manufacturing, etc.;
- Technology involving industrial sectors encouraged with emphasis by the People’s Governments of provincial and municipal levels;
- Technology involving Internet, big data, cloud computing with a fast turnover rate in technology or products;
- The invention filed for the first time in China and then filed in another country or region;
- Circumstances entailing significance relating to national or public interest.
Furthermore, the qualifications for accelerating patent invalidation cases are as follows:
- Infringement disputes occurred in association with a patent invalidation, where local IP office is involved, a lawsuit is pending at the court, or a mediation proceeding is undergoing;
- Circumstances of invalidation entailing significance relating to national or public interest
Examination Time frame:
To accelerate an accepted case, PPE sets a capped time frame to considerably reduce the pendency of each kind of eligible cases:
- Invention patent application: the first office action should be issued within 45 days and a decision should be rendered within one (1) year;
- Utility model and design patent application (no substantive examination): a decision should be rendered within two (2) months;
- Re-examination: a decision should be rendered within seven (7) months;
- Invalidation of invention or utility model patents: a decision should be rendered within five (5) months; and
- Invalidation of design patents: a decision should be rendered within four (4) months;
Eligible PPE applicants are applicants of patent application and petitioners of re-examination. For invalidation cases, local IP office, the court or the arbitral/mediation institution that is handling the infringement dispute involving the patent at issue are also eligible to apply for PPE, in addition to the patent holders and the invalidation petitioners.
To request, a standard PPE application form and materials concerning prior art and prior designs are necessary for patent, utility model and design patent applications. The patent search report is no longer required to simply PPE application procedure. However, recommendation letter from relevant department of the State Council or provincial IPO is still required in most situations, except for patent applications that are firstly filed in China and have filed in other countries.
Notably, accelerating an invention patent application will be admissible only after or simultaneously when a request for substantive examination is made. In case there are multiple patent applicants, or co-owners for a patent, consent from all applicants or patent owners is required.
During the fast track, the applicant’s response to an Office action is to be made within a shortest timeframe of two (2) months for invention patent applications or fifteen (15) days for utility model or design patent applications.
Suspension of PPE:
SIPO may suspend the prioritized examination and allow the case to return to the regular procedure if any following event occurred:
- Amend the patent application
- Responses to Office action made beyond the specified 2-month time frame
- Submit false materials
- Found to be abnormal patent application
- Re-examination petitioner requests for extension of time to respond
- Invalidation petitioner files supplemental brief after the PPE request is accepted
- Patentees amend the claims by ways other than deletion after the PPE request is accepted
- Re-examination or invalidation procedure is suspended
- Case adjudication is dependent to the outcome of other cases
- Other difficult cases approved by the Patent Reexamination Board