Abstract:
Today, China plays a critical role in the field of Intellectual Property Rights. The accelerated development of the Chinese economy, along with changes in Chinese intellectual property laws, has made China a technology and intellectual property hotbed. As an ever-increasing number of foreign patent applications are filed in China, foreign applicants have demanded that Chinese law firms obtain patent examination results via the most effective and cost efficient procedures. This article, written by attorneys at the Linda Liu & Partners law firm, analyzes the different types of patent protection available for patentees, specifically the utility model and invention patents, and concisely summarizes the most critical procedural issues encountered in obtaining patents within the Chinese Patent Law System.
Key words:
“Chinese Patent Application Process”, “Linda Liu & Partners”, “Intellectual Property”, “Chinese Intellectual Property Law”, “same subject matter with both invention application and utility model application”, “utility model patent application”, “utility model patent”, “invention patent”, “filing both a utility model patent application and invention patent application for the same invention”, “speed up patent application examination”, “amendments”, “divisional application”, and “application with priority.”
I. Overview of the Chinese Patent Application Process for both Domestic and Foreign Applicants.
1. Applications in Total
With the rapid economic growth and expansion of business in China, understanding trends in intellectual property rights is essential for companies doing business in China. The following are the total patent applications received by State Intellectual Property Office of the People’s Republic of China (“SIPO”) in 2006 and 2007.
SIPO Patent Applications from January 2006 - December 2006
[The above data is cited from the website of SIPO: http://www.sipo.gov.cn]
SIPO Patent Applications from January 2007 - December 2007
[The above data is cited from the website of SIPO:
http://www.sipo.gov.cn]
The data above shows that the number of patent applications to SIPO in 2007 increased by about 20% over the number of patent applications to SIPO in 2006. The total of domestic applications increased by 24%, while the total foreign applications increased by 4%. This increase in patent applications is attributable to an increase in domestic enterprises, and from individuals have a growing awareness of the importance of an intellectual property strategy for their companies.
2. Granted Patents Status of Patent Applications to SIPO
Applicants submit applications to SIPO in order to obtain a patent to protect their invention, and to gain economically from the invention they have developed via the temporary monopoly granted by the patent office. The following data details granted patents by SIPO in 2006 and 2007.
There is a difference between number of utility model patent applications and grants – between domestic and foreign applicants. Maybe foreign applicants have not realized the value in the utility model patent. This paper will help people understand the value and difference between the two in the Chinese application procedure.
SIPO Patent Application Granted from January 2006 - December 2006
[The above data is cited from the website of SIPO:
http://www.sipo.gov.cn]
SIPO Patent Applications Granted from January 2007 - December 2007
[The above data is cited from the website of SIPO:
http://www.sipo.gov.cn]
The data above shows the total number of patents granted by SIPO has risen between 2006 and 2007. Applications for utility model patents and design patents from abroad are comparatively less than the corresponding domestic application. For invention patent applications, the proportion of granted patent applications from abroad is higher than that of domestic patents granted. This indicates that there is no difference between domestic applicants and foreign applications in patent application examination by SIPO.
II. Chinese Patent Application Process: Procedural Issues
Linda Liu & Partners, a China based law firm located in Beijing, has received many consultation letters regarding the Chinese Patent Application Process since it was founded five years ago. The following is a summary of the most frequent procedural issues encountered during the application process. This information has been provided by Linda Liu & Partners as a reference for the convenience of our clients.
1. Both the invention application and utility model application have the same subject matter.
In the amendments of the “Examination Guideline” of July 1, 2007, the effectiveness of abandoning a patent right in “same subject matter with both invention application and utility model application” is amended to “deemed to be nonexistent from the very beginning”. Many applicants question the value of obtaining a utility model patent when the utility model application has the same subject matter as the invention application. The following text addresses this procedural issue encountered by applicants.
(1) Typical situations where “same subject matter with both invention application and utility model application” arises.
There are two typical situations arising from the procedural issue where the “same subject matter with both invention application and utility model application”:
Situation 1: Applicant applies for both a utility model patent and an invention patent on the same day for the same subject matter; or
Situation 2: Applicant applies for a utility model patent first, and then applies for an invention patent later, but before the utility model application is granted and published.
For both of these situations, the utility model application is typically granted before the invention application.
(2) Advantages of the situation where both invention application and utility model application have the same subject matter.
According to the provisions of the amended “Examination Guidelines”, when an invention patent application is granted, the utility model patent shall be deemed as nonexistent. However, it is still helpful for the applicants to adopt the strategy of “same subject matter with both invention application and utility model application”.
The following table shows the difference between invention and utility model patent:
The following gives a detailed explanation of the differences between invention patents and utility model patents shown in the table.
(1) About invention-creation with low inventive step.
The recently amended “Examination Guideline” states that the inventive step criteria for a utility model patent should be lower than the criteria for an Invention patent. The requirements are different in that total of current technology area and references documents used with invention applications (for the detail, please see the amended ‘Examination Guidelines’, Part 4, Chapter Six). For the same technique solution if the inventive step is relatively low, but there exists features and effects different with the current techniques, then it is possible that the application meets the requirements on inventive step for utility model, even though it may not meet for the requirements for an invention patent.
At the early stages of invention development, applicants usually do not have an exact understanding of its invention step, whether it has any invention step and whether its invention step is high or low. Under such circumstance, the strategy of “same subject matter with both invention application and utility model application” can be adopted. If later it’s found with low inventive step, the applicant can still keep the application for utility model patent and abandon the Invention patent application. By applying for both an invention and utility model patent at the same time, an applicant increases the probability of obtaining a final patent right, and ensures the possibility of an applicant’s or patentee’s ability to profit from the invention.
(2) “Short-term technique” invention
Today technology changes quickly, and technologies may differentiate at a rapid speed. Depending on the technology, its importance and the specific time that it would be eliminated can only be known until they enter into the market. It is difficult to predict the necessary protection period for such technology before the application.
Under this scenario, the strategy of “same subject matter with both invention application and utility model application” can be adopted. After an invention’s “life-force” is confirmed through market testing, a decision about the type of patent required can be made based on public interest in the product. If the invention has a comparatively weak “life-force”, the applicant can abandon the invention patent application and keep the utility model patent right in order to minimize the high cost of intellectual property protection for the company.
(3) Market Influence
The existence of a utility model patent right in Chinese intellectual property law is remarkable, even in the situation where the applicant is not anxious to implement a technical solution, and has a total confidence about its invention step (creativity of the invention). Although an inventor abandons the utility model patent when the corresponding invention application patent is granted, the significance of the utility model patent should not be neglected.
Under the present business environment of fierce market competition, it is a significant benefit for a company to be able to guard market share via a utility model patent grant. Due to the short term examination period to obtain a utility model patent, (about 1 year) it is significant for the enterprise to own the utility model patent right. Holding a utility patent enables the enterprise to promote the product, gain consumers’ acknowledgement towards the technology, and for preventing counterfeits.
In a corporation’s intellectual property strategy, the utility model patent can be seen as a competitive business asset and as preparation for the market development of the product.
(4) Applying for both the invention and utility model patents allows the applicant to make the decision to go forward with the substantive examination required for an invention patent at a later time.
In the case where the applicant decides to apply for both an invention and utility model patent, the applicant can choose to apply for an invention application without requesting for substantive examination in order to prolong the time until the application may be granted. Meanwhile the Utility Model patent application shall be applied to explore the effect of patent protection for an invention. When a patent right is granted for the utility model application, a competitors’ attitude can be flushed out by sending warning letters, sometimes even through ‘competitors’ request for invalidation to test the stability of the patent right, in order to make sure the importance of the right and thus make a decision on whether requesting for the substantive examination or abandoning.
(5) Filing a Utility Model Patent Application Enables an Applicant to Rapidly Exercise their Rights because of a shortened review’s period.
Even in the case where a substantive examination has been requested when applying for the invention application, it is still a long period of time, at least one and a half years from the time the Utility Model patent gets granted until Invention patent gets granted. During which an applicant is waiting for the invention patent application to be approved, with the faster utility model patent right, the patentee can enforce the rights to warn or to sue infringers.
According to current legislative practices, although the utility model patent is deemed to be immediately void once the invention patent is granted, there is no retroactive effect on the decision of invalidation. Any judgment or order on patent infringement which has been pronounced and enforced by the People's Court, or on any decision concerning the handling of patent infringement which has been made and enforced by the administrative authority for patent affairs, and any contract of patent license and of assignment of patent right which have been performed, prior to the decision of invalidation, is still valid and is not voided by the invalidation of the method patent. Therefore during this period the utility model patent right shall be exercised, the utility model patentee may require an infringer to stop infringing and to compensate for the damage.
2. During the patent application process, which documents can simplify or expedite SIPO patent application procedures?
According to relative provisions of within the Patent Law of the People’s Republic of China, when any foreign applicant or entity having no habitual residence or business office in China applies for a patent, or has other patent matters to attend to in China, the applicant or entity shall appoint a patent agency designated by the State Council of the People's Republic of China to act as his or its agent. Therefore, for applications filed by a foreign applicant, an original Power of Attorney executed is required for every application. One of the most commonly encountered problems is incurring an extra service fee and postponement of preliminary examination because of the late-filing of the Power of Attorney, as the Power of Attorney cannot be signed before the new filing. Because failure to obtain proper Power of Attorney is a common problem, we will review the documents of which the copies can be submitted after the registration with SIPO to simplify procedures in the coming applications for the applicant.
According to Chinese Guidelines for Patent Examination, Part 1, Chapter 1, Article 6.1.2, when any foreign patent applicant appoints a patent agency designated by SIPO to act as their agent, a General Power of Attorney may be deposited with the Patent Office. After a General Power of Attorney meeting the requirements specified by SIPO is received, SIPO gives a number to the General Power of Attorney and notifies the patent agency. After the General Power of Attorney is registered with the SIPO, , the applicant is allowed to submit to SIPO just a copy of the General Power of Attorney, instead of submitting an original Power of Attorney to SIPO.
Besides the General Power of Attorney, the applicant could also register the original Letter of Termination when terminating the entrustment with the former agency for several applications.
Once SIPO has the Letter of Termination on file, when requesting for change the bibliographic data, the applicant can submit the copy of the Letter of Termination instead of original one for all future patent applications.
Finally, if registered documents have been deposited with the Patent Office, the applicant or agency could request for the copies of the document from the patent office at any time.
3. How can an applicant accelerate the examination process?
Most applicants hope to be granted a patent soon after the patent application is filed. Although China is working to accelerate examination procedures, only Chinese applications would benefit from the accelerated examination procedures. It has always been an important issue for foreign applicants on how to shorten the examination period through the efforts in procedure. The following are some suggestions on how to accelerate the procedure:
(1) About the Procedure
Preliminary Examination Stage
It is recommended that the applicant submit accurate and complete certified documents such as Power of Attorney and priority documents concurrently at the time of new filing so as to avoid receiving notification for correcting application process defects, which may delay the examination procedure in preliminary examination stage. Meanwhile a substantive examination can be requested at the time of the new filing so as to enter the procedure of the substantive examination directly after the application’s publication.
According to the Implementing Regulations of the Patent Law of the People’s Republic of China, Article 46, A declaration shall be made to SIPO in the case where the applicant requests an earlier publication of their application for a patent for invention. SIPO shall, after preliminary examination of the application and, unless it is going to be rejected at this stage, publish the patent application immediately. Since the entry date for PCT International Application into Chinese stage usually exceed 18 months from the priority date, such regulation shall only apply to the applications submitted under the Paris Convention. If the applicant requests an earlier publication and substantive examination at the time of new filing, the application will enter the procedure of substantive examination soon after its publication, upon qualification for preliminary examination.
Substantive examination period
Besides filing rapid responses to office actions, applicants can also contact the patent application examiner directly in order to facilitate the examiner’s understanding of the invention application. By contacting the examiner and reviewing the invention with the examiner, an applicant can increase the chances of the application being granted a patent after the first office action.
Patent grant and registration period
It is also recommended that the patent applicant completes the patent registration procedure and pay any related fees as soon as the applicant receives the notification for a patent grant, so that they can obtain the patent certificate as quickly as possible.
(2) Substance of the application
In terms of the substance of the application, the applicant should consider perfecting the application before requesting a substantive examination with SIPO. Perfecting the application before requesting a substantive examination serves to make the examiner point out all the defects of the application only in the First Office Action.
4. Opportunities to amend an invention patent application
After the invention patent application has been filed, it can be further perfected at the applicant’s request. The following introduces the corresponding opportunities for update amendments.
From the new patent application filing, until the patent application is granted by SIPO, the applicant has several opportunities to make initiative amendments. The following time-axis details when initiative amendments can be made:
In the time axis, “a” refers to the day on which the patent application is filed with SIPO, which is the Application Date; b represents the day the patent comes into effectiveness, which is Day of grant, “A” represents the date the applicant requests a substantive examination. “B” represents the passage of the 3-month period after receiving "Notification of Publication of Application for Invention Patent and Entry thereof into substantive Examination Procedure". “C” represents the length of time for responding to the office action:
(1) Opportunity to amend when requesting a substantive examination (point A)
A substantive examination is typically requested simultaneously when filing the invention patent application. Requesting a substantive examination is beneficial because it simplifies the application procedure, but limiting because the applicant loses the opportunity to make amendments available when the substantive examination is requested after filing the patent application.
If the patent application is rushed, and the applicant wants to amend the application after its filing because it was prepared hastily, it may be beneficial for the applicant to file the application without substantive examination request in order to make use of the opportunity to make amendments when the substantive examination is requested after filing the patent application.
(2) Opportunity to amend for three months after receiving the "Notification of Publication of Application for Invention Patent and Entry thereof into Substantive Examination Procedure" (time-point B).
This is the last opportunity for preliminary amendment before the Office Action period, and at least half a year has passed after the application was filed (when claiming priority). The applicant may take this opportunity to amend by referring to specific technology requirement of the product, readjusting the protection scope of the claim, and to further perfect the description. This shall be very important for the applicant.
(3) Opportunity to amend when responding to an office action
The opportunity to amend described at time-point C are to be made according to the points indicated by the examiner in the office action.
Implementing Regulations of the Patent Law of the People’s Republic of China, Article 51, Rule 3, states that amendments in submitted as a response to an office action should be strictly made in accordance with issues with the patent application pointed out by the office action. The opportunity for amendment in response to issues raised in an office action doesn’t belong to a statutory opportunity. Even though an amendment does not meet the requirements of the Rule 51.3 (
Implement Regulations of the Patent Law OF the People’s Republic of China), if the contents and scope of the amendment are in conformity with the provisions of Article 33 (‘
Patent Law of the People’s Republic of China’) the amendment may be accepted by the examiner, and is equivalent to an amendment which is submitted according to the requirements and issues raised within the office action. Amendments made in this way may be acceptable, provided that the defects existed in the initial application documents are eliminated in the amended documents by the additional amendments, and SIPO granting the application is possible.
5. Related issues on divisional applications
Under Chinese Patent Law, a patent application not complying with the unity requirement can gain protection by deleting the claims without unity, and then by filing a divisional application. The applicant may perfect application documents by utilizing the divisional application opportunity.
The following is a procedural view diagram and description of a divisional application.
(1) Limitations of divisional application
① Limitation of filing time
a. Opportunities available to file a divisional application
Taking the flow chart above for reference, no matter which stage the parent application stands in this flow chart, may it be the base to file a divisional application.
b. At the latest, the divisional application can be filed before the parent application gets granted.
The applicant of the parent application shall file a divisional application before the expiration date, before the end of the two-month period from when the parent application was granted by the SIPO. A divisional application can not be filed if in the situation where the parent application has been withdrawn, or in the situation where the parent application is deemed to be withdrawn and the patent right has not been restored yet.
Although the applicant proceeded with the registration procedure before the expiration date of two-months from when the parent application was granted, the applicant should still file a divisional application after the registration. More specifically, the applicant should file a divisional application before the expiration date which is two-months from when the parent application was granted by SIPO.
As illustrated in the following chart, time point A represents the date that SIPO issue the notification of the grant of a patent right to the parent application; time point B represents the date of registration of the patent; time point C represents the of the expiration date of divisional application. Between time points B and C, a divisional application would still be available.
c. Till the rejection of original application takes effect at the latest
An applicant can file a divisional application within three months after a rejection has been received, even if a re-examination request is filed, and shall be obligated to do the same after a re-examination request is filed or during the administrative lawsuit period filed when re-examination is unacceptable. As long as the rejection decision hasn’t become final, the applicant shall have the option to file a divisional application.
d. Regulation of the opportunity for a divisional application to be filed
When any additional divisional applications are filed derived from another divisional application, the filing time shall be verified according to the parent application. If the time of filing of a divisional application fails to satisfy the requirement provided in B and C above, it’s not acceptable.
e. Exceptions
If the divisional application does not satisfy the unity requirement, a further divisional application can be filed according to examiner’s requirements , and filing date of the further divisional application must not meet the requirement of the b and c.
In this situation, the applicant should submit copies of the “Notification of Office Action” (which specify the limitation of unity by the examiner) or “Notification of division” by the examiner when re-filed a divisional application. The examiner will issue a “Notification of Correction”. If the application still can not meet the requirements after a correction to the application, the examiner will issue a “Notification that Divisional Application Deemed Not to Have Been Filed”.
② Limitation on applicant
The applicant for a divisional patent application should be the same applicant as is listed on the parent application; if not, an assignment transferring the patent right must be submitted to SIPO.
③ Limitation on the content of a divisional application
When filing a divisional application, beyond the limitations on filing opportunities, there are limitations on the content of a divisional application. The content of a divisional application shall be restricted to satisfy the following requirements:
a. The type of parent application is unchangeable
One divisional application content restriction is that the type of divisional application shall stay consistent with the parent application. For example, if the parent application is an invention patent application, the divisional application can only be an invention patent application too. If during the preliminary examination stage of a divisional application the examiner discovers that the divisional and parent application are of different in type of application, he shall issue “the Notification that Divisional Application Deemed Not to Have Been Filed” to the applicant.
b. No exceeding the scope of disclosure of the parent application
The divisional application shall not go beyond the scope of disclosure of the parent application. Once the examiner finds the divisional application goes beyond the scope of disclosure of the parent application, he shall issue an office action and require the applicant to amend the divisional patent application. The divisional application will be rejected by the patent examiner if the amendment specified by the office action is not made.
Specifically, the “documents of parent application” mentioned above refers to the claims and descriptions as originally filed for the application (parent application) and do not include the latest amendments to the parent application made prior to filing the divisional application. This means the content that had been deleted from the claims and description of the parent application would still be available to be filed in a divisional application.
(2) Time Limits and Fees
① Time Limits
a. Time limit within the expiration
All of the statutory time limits of divisional applications are calculated from the parent application date (or its earliest priority date).
For example: If the parent application was filed on January 5, 2007, without claiming any priorities. The divisional application was filed on January 5, 2008. The time limit for requesting a substantive examination for the divisional application would be calculated until the end of three years from the application date of the parent application, that is, January 5, 2010.
b. Dealing with a time limit that has expired
For time limits that have already expired when filing a divisional application, the applicant should supplement all the related formalities in two months from the filing date of the divisional application. If the supplement is not made in time, a “ Notification that Divisional Application has Deemed to Have Been Withdrawn” will be issued by SIPO.
For example: A parent application was filed on January 5, 2007, without claiming any priorities. The divisional application was filed on February 5, 2010 (calculated from to the application date of the parent application, the time limit for filing a substantive examination is expired). So the time limit for requesting the substantive examination for the divisional application shall be postponed by two months from the day that the divisional application was filed, i.e. April 5, 2010.
② Fees
Divisional application is considered to be a new application with of the standard fees charged to new applications, e.g.: a filing fee, the request fee for substantive examination, etc
Applicant pays these fees within two months of the filing day of the divisional application. If the applicant fails to pay these fees, a “Notification that Divisional Application Deemed to Have Been Withdrawn” will be issued by SIPO.
(3) Making full use of a divisional application
Although regulations for a divisional application are established to avoid the unity limitation in patent applications, in practice, an applicant can take advantage of a divisional application to make full use of the application process. Besides filing a divisional application based on unity issues, the filing of a divisional application can also be an option for the applicant that wants to amend the claims voluntarily, but where there is no amending opportunity any more in the parent application, or where the applicant cannot meet relative requirements any more. By filing a divisional application, the options are available to the applicant again.
The followings are three common situations making full use of a divisional application:
① When responding to “Office Action”, that applicant discovers that the claims should be amended, but amended in a way that may not be allowed.
Where an amendment made in responding to an Office Action will make an additional research necessary for the examiner, - for example by deleting a feature in an independent claim and expanding the scope of protection of the claims, this would not be acceptable even though the altered amendments would not go beyond the scope of the original description and claims. In such circumstances, the applicant can prosecute his amended claims by filing a divisional application, as a means of obtaining the patent protection necessary or suitable for the invention described.
② Amending the claims after a response to the “Office Action”
Generally, after responding to an Office Action, it is not possible for the applicant to amend the application documents without the examiner requesting the applicant to do so. If the applicant finds that the application documents need to be perfected especially for amendments to the claims, the applicant can make use of the option to prosecute amended application documents by filing a divisional application.
③ Protect patent rights before the rejection of patent application takes effect
When a patent application is rejected and enters the re-examination or administrative lawsuit procedure, there is the risk that a final decision of rejection will be issued if the applicant argues against the first instance decision without amending the application documents. If the rejection decision then becomes final, it is not be possible to file a divisional application any longer. Therefore in this situation it is recommended that the applicant file a divisional application at the same time a request for re-examination or administrative lawsuit procedure is made. The advantage of this approach is that the applicant can reserve a further option to amend the application document even if the rejection of the parent application becomes final.
6. Claiming foreign priority
When filing a Chinese patent application under the Paris Convention, foreign applicants may come across various matters regarding the priority claiming, e.g.: when shall the assignment of priority right be filed, or what are the requirements to renew the priority? Especially from July 1
st, 2006 after the Guideline of Examination of the People Republic of China has been amended and some specific regulations concerning priority have been adjusted, the applicant may have a more distinct understanding of some specific provisions. To clarify this issue, we will provide a description and explanation concerning these issues when claiming foreign priority:
(1) Declaration Claiming Priority
In the declaration claiming priority, the applicant should indicate the filing date and the application number of the previous application. This information is the basis of the right of priority. Also necessary is the name of the country or inter-governmental organization before which the previous application was filed. If the applicant fails to indicate, or indicates wrongly, the filing date of the previous application or the name of the country or the inter-government organization before which the application was filed, or misses one or several items of multiple priorities, the declaration shall be deemed not to have been made.
In the case where the application number of the previous application is not indicated, or wrongly indicated in the declaration, and the applicant has submitted a certified priority document within the prescribed time limit, the applicant could initiatively make corrections to the declaration of claiming priority.
(2) Certified priority documents
① A copy of previous application document
Issuing Organization: A copy of the previous application document shall be issued by the country or the governmental organization chief department, where the previous application is filed, which is Intellectual Property Bureau.
Submitting time limit: a copy of the previous application shall be filed to SIPO of the People Republic of China at the latest three months after the filing date. If the applicant fails to file in time, the application shall be deemed to not have been claimed on such foreign priority.
Attention point: Generally, for each application an original priority document needs to be filed with SIPO. However if there are more applications filed at SIPO, all claiming the priority of the same original application, it is sufficient to just file one original priority document and copies for the other applications, but to mention the file number of the application in which the original was filed. This is a reasonable option if it is not convenient for the applicant to apply for more priority documents
② Assignment of priority right
When to file an assignment of priority right?
A signed assignment of priority should be filed when the applicants of the subsequent application and the previous application are entirely different, and when the priority right has been transferred.
Signature and way of signing: the assignment of priority rights should be signed or sealed by all the applicants of previous application; the signature of all the applicants of the previous application sign either on one certificate of transference, or individual signatures can be made on several certificates.
Filing time limit: the assignment shall be filed with SIPO within three months of the application date. If the assignment is filed after three months, or if the documents do not meet the requirements, the foreign priority be found to have not have been claimed.
(3) Withdrawal of the priority declaration
After claiming priority, it is possible to withdraw the claiming for all or only part of the claims. For withdrawal, all applicants have to sign a respective letter of withdrawal.
Time limit changes possibly caused by withdrawing priority:
If withdrawing priority leads to a change of the earliest priority date for the application, the expiration of all the time limits shall be calculated from the modified priority date. If the request of withdrawing priority reaches the SIPO after the fifteenth month from the previous earliest priority date, the publication time limit shall still be calculated from the previous earliest priority date.
Advantage and disadvantage of withdrawing priority:
Advantage: If withdrawing a priority leads to a change of the earliest priority day, the time limit may also be postponed respectively. Time limits that may be postponed include publication time limits and deposit of biological material time limits.
Disadvantage: If withdrawing a priority leads to a change of the earliest priority date, the related scope of examination search time limit may be changed, and more reference documents searched out, which may affect the application’s novelty and creativity.
(4) Renewal of priority
According to 6.2.5, Chapter One, Part One of Examination Guidelines of the People's Republic of China, restoring the right of priority is available by:
① Providing any two items of from the previous application country which show previous application date from claiming of priority, or previous application number written correctly. A certified copy of the priority document must have been filed within the time limit;
② Claim of priority is written correctly, but applicant failed to file the copy of the previous application document or assignment of priority right within the time limit;
Critical Point: If the applicant failed to file the copy of the application document, the priority is deemed to not have been claimed, and the documents are not available even after the restoring time limit, the applicant shall request for restoring. The applicant should first pay the fee, and then the patent examiner will still give the applicant an opportunity to supplement the application. By then, the applicant should have filed the documents within one month after receiving the “Notification of Amendment” from the patent examiner.
For example: A patent applicant claiming foreign priority of an application date of January 1,2008, who fails to file a copy of the previous application document within the time limit (April 1, 2008) will receive a “Deemed not have been claimed foreign priority” notification. The applicant should conduct a resuming procedure within two months after receiving the notification, and file a copy of the previous application document with SIPO. If the applicant fails to do so, the applicant should file a resuming request within the resuming time limit, and the examiner shall issue a “Notification of correction in resuming procedure” requiring the applicant to file a copy of previous application within one month from receiving the notification.
③ Priority in the divisional application had been claimed in the original application.
According to the Guidelines for Examination of Chinese Patent, the bibliographic data of the divisional application should be identical with the ones in the original application.
For a divisional application, if the priority was omitted in the request form, but that priority had been claimed in the original application, the applicant could request to restore the priority right according to the priority claiming of the original application.
④ The declaration of priority is written correctly, but the applicant failed to make a full payment of the claiming priority fee within the requisite time limit.
In such a case, a notification of the priority has been not claimed would be issued by SIPO, and the applicant could file a request to restore the priority right and pay the fees then.
