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Administrative Measures for Prioritized Patent Examination (2017) (No. 76)

SIPO Directive

No. 76

 

The Administrative Measures for Prioritized Patent Examination has been reviewed and approved by the Council of SIPO Affair. Hereby, the Measures is enacted and will come into effect from August 1, 2017.

 

Director　Changyu SHEN

June 27, 2017

 

Administrative Measures for Prioritized Patent Examination 

 

Article 1 In order to facilitate optimization and upgrade of industrial architecture, promote the implementation of Chinese national intellectual property strategy and the foundation of intellectual property power, serve innovation-driven development, and improve the patent examination proceeding, this Measures is enacted and formulated in accordance with the Patent Law of the People’s Republic of China and the Implementation Regulations of the Patent Law of the People’s Republic of China (hereinafter referred to as the Implementation Regulations of the Chinese Patent Law).

 

Article 2 This Measures is applicable for the prioritized examination of following patent applications or cases.

　　

i. a patent application for invention in the stage of substantive examination;

　　

ii. a patent application for utility model or design;

　　

iii. reexamination of a patent application for invention, utility model and design;

　　

iv. invalidation of a patent for invention, utility model and design.

Where prioritized examination is conducted and performed pursuant to a bilateral or multilateral agreement signed by the State Intellectual Property Office and a patent examination institution of other states or regions, relevant articles and provisions of the agreement shall be complied with, and this Measures is not applicable.

 

Article 3 Patent application or reexamination cases satisfying one of the following conditions may request prioritized examination:

　　

i. where key industries of China, for example, energy conservation and environmental protection, new-generation information technology, biologics, high-end equipment manufacturing, new energy, new material, new energy vehicle, intelligent manufacturing, etc. are involved;

　　

ii. where key industries encouraged by provincial governments and municipal governments of districts are involved;

　　

iii. where the fields of Internet, big data, cloud computing, etc., are involved or the product has a rapid update;

　　

iv. where the patent applicant or petitioner has been prepared for implementation or has started implementation of the invention, or there is evidence proving that someone else is implementing the invention;

　　

v. where the Chinese application is a patent application first filed in China and then filed in a different country or region on the same subject;

　　

vi. where the application is of great significance for national interest or public welfare.

 

Article 4 Invalidation cases that satisfies one of the following conditions may request  prioritized examination:

　　

i. where regarding infringement disputes on the patent involved in the invalidation, the involved parties has requested the local Intellectual Property Office for resolution, appealed to the People’s Court, or requested arbitration and mediation organizations for arbitration and mediation;

　　

ii. where the patent involved in the validation case is of great significance for national interests and public welfare.

 

Article 5 Where a request for prioritized examination is submitted for a patent application or a patent reexamination, consent of all applicants or all petitioners shall be obtained; where a request for prioritized examination is submitted for an invalidation, consent of the persons making the request for invalidation or all the patentees shall be obtained.

 

The local Intellectual Property Office, the People’s Court or the arbitration and mediation organization that settle and review the involved patent infringement disputes may file a request for prioritized examination of an invalidation case.

 

Article 6 The number of the patent applications, patent reexamination cases and invalidation cases going through prioritized examination shall be determined by the State Intellectual Property Office according to the examination capacity in different special technical fields, the number of granted patents in the previous year, the number of cases to be reviewed in the current year, and other conditions.

 

Article 7 Patent application or patent reexamination cases requesting prioritized examination shall be performed in electronic application.

 

Article 8 Where an applicant requests for prioritized examination for a patent application of invention, utility model or design, an application for prioritized examination shall be submitted, as well as the materials of the prior art or the available design information and relevant certificates; the application for prioritized examination shall be signed with recommendations by relevant department of the State Council or a provincial Intellectual Property Office, except for the cases specified and prescribed by Item v of Article 3 hereof.

 

Where an involved party requests for prioritized examination for patent reexamination or invalidation, an application for prioritized examination shall be submitted, as well relevant certificates; the application for prioritized examination shall be signed with recommendations by relevant department of the State Council or a provincial Intellectual Property Office, except for the reexamination cases that have gone through prioritized examination in the substantive examination or the preliminary examination procedures.

Where a local Intellectual Property Office, People’s Court or arbitration and mediation organization files a request for prioritized examination of an invalidation case, an application for prioritized examination shall be submitted and the reasons stated.

 

Article 9 The State Intellectual Property Office shall, after the reception and review of the request for prioritized examination, immediately inform the requester of the prioritized examination about the review results.

 

Article 10 Where the State Intellectual Property Office approves the prioritized examination, the case shall be closed within the following time limit from the data of the approval:

　　

i. for a patent application for invention, the first Office Action shall be issued within 45 days, and the case closed within a year;

　　

ii. for a patent application for utility model and design, the case shall be closed within 2 months;

　　

iii. for a patent reexamination case, the case shall be closed within 7 months;

　　

iv. for an invalidation case of invention and utility model, the case shall be closed within 5 months; for an invalidation case of design, the case shall be closed within 4 months.

 

Article 11 Regarding a patent application under prioritized examination, the applicant shall make a response or rectification as soon as possible. The time limit for the applicant to make a response to the Office Action for an invention patent is two month from the issuing date of the Notification of the Office Action. The time limit for the applicant to make a response to the Office Action for a utility model and design patent is 15 days from the issuing date of the Notification of the Office Action.

 

Article 12 Regarding a patent application under prioritized examination, the State Intellectual Property Office may cease the prioritized examination procedures to proceed with ordinary prosecutions and notify the prioritized examination requester under one of the following circumstances:

　

i. where the applicant submits amendments to the application document under Article 51.1 and Article 51.2 of the Implementation Regulations of the Chinese Patent Law after the request for prioritized examination is approved;

　　

ii. where the applicant makes a respond in a period exceeding the time limit specified and prescribed in Article 11 hereof;

　　

iii. where the applicant files false materials;

　　

iv. where the application is found during the prosecution to be an abnormal patent application.

 

Article 13 Regarding patent reexamination and invalidation cases under prioritized examination, the State Intellectual Property Office may cease the prioritized examination procedures to proceed with ordinary prosecutions and notify the prioritized examination requester under one of the following circumstances:

　　

i. where the reexamination petitioner delays the response;

　　

ii. where, after the request prioritized examination is approved, the person making the request for invalidation submits additional evidences and reasons;

　　

iii. where, after the request prioritized examination is approved, the patentee amends the claims in a manner other than removal;

　　

iv. where the patent reexamination or the invalidation procedure is suspended;

　　

vi. where the review of the case relies on the result of a different case;

　　

vi. where the case is a difficult case, and the approval of Director of the Patent Reexamination Board is obtained.

 

Article 14 This Measures shall be subject to the interpretation of the State Intellectual Property Office.

 

Article 15 This Measures shall come into force on August 1, 2017. Meanwhile, the Administrative Measures for Prioritized Examination of Invention Patent Application enforced on August 1, 2012 shall be abolished.