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Fast Tracking Patent Applications in China - New Measures in Force August 1, 2017

August 15, 2017

By Isi Caulder

Effective 1 August 2017, new options to fast track Chinese patent cases are available under China’s State Intellectual Property Office (SIPO) Administrative Measures for Prioritized Examination of Patent Applications (“the new Measures”). The new Measures for prioritizing (accelerating) examination for Chinese patent cases could be a significant boon to foreign applicants who wish to quickly obtain strategic Chinese patent protection for a new product that is being manufactured or launched in the Chinese marketplace.

The new Measures were released on June 27, 2017 and came into effect on August 1, 2017 replacing previous measures issued by SIPO on June 19, 2012 (“the previous Measures”). The new fast track Measures provide the opportunity for expedited examination under certain circumstances in respect of prosecution, re-examination and invalidation proceedings and are applicable to all types of patent applications, namely invention, utility model and design patent applications.

Eligible Technical Fields

Prioritized examination or re-examination of a Chinese patent application is available for patent applications which cover technology in certain technical fields namely: energy conservation, environment protection, new generation information technology, biotechnology, high-end equipment manufacturing, new energy, new materials, new energy vehicles, intelligent manufacturing, internet, big data, and cloud computing.

The new Measures expand the range of technologies that are considered eligible for priority examination. Under the previous Measures only environmentally-friendly technology was enumerated.

Additional Eligibility Circumstances

The new Measures provide four additional stand-alone circumstances under which Chinese patent applications are eligible for prioritized examination:

(1) The applicant is about to implement the subject technology, has already implemented the subject technology, or can provide evidence that others are currently carrying out the subject technology in China.

(2) Pending patent applications that were first filed in China and then filed afterwards in other countries or regions.

(3) Where infringement issues have arisen and where the applicant is involved in infringement disputes, the parties concerned have instituted “administrative operations” in their local IP offices, instituted legal proceedings before courts, or asked for arbitration.

(4) Patent applications that are of great significance to the interest of the State or the public.
Requesting Prioritized Examination/Process

Prioritized examination may be requested using an electronic request form that has been recognized and endorsed by a local SIPO branch and providing relevant evidence relating to current technology or current design information materials. There is no official fee for prioritized examination.
Under the new Measures, SIPO will use its discretion to grant prioritized examination in a particular case taking into account the examination capacity of the examination division and each technical field, the number of patents granted in the previous year and the number of pending patent applications in the current year.
Upon approval of the request, prioritized patent applications cases will be handled according to the following timeframes:

 

Application Type

Stage

Invention Patent

Utility Model Patent

Design

Prosecution

First Office Action issued within 45 days and examination completed within 1 year

Examination will be completed within 2 months

Examination will be completed within 2 months

Re-examination

Complete re-examination within 7 months

Complete re-examination within 7 months

Complete re-examination within 7 months

Invalidation Proceeding

Complete within 5 months

Complete within 5 months

Complete within 4 months

 

An applicant requesting prioritized examination is required to respond to Notifications issued by the relevant authorities in a timely manner. The time limit specified in the Notifications cannot be extended. Further, except for deletion of the claims, the applicant is not allowed to make voluntary amendments on the claims after the request is approved. If these requirements are not met, the patent case shall be returned to the normal examination procedure.

While it remains to be seen how popular the new Chinese patent case fast track will be with foreign applicants, the new Measures could provide a significant advantage to those who wish to quickly obtain Chinese patent protection for a new product that is being manufactured or launched in the Chinese marketplace.

The above only serves as a quick guideline to the new Administrative Measures and some details and information are omitted for simplified reference.

Content shared on Bereskin & Parr’s website is for information purposes only. It should not be taken as legal or professional advice. To obtain such advice, please contact a Bereskin & Parr LLP professional. We will be pleased to help you.

Author(s):

Isi Caulder Isi Caulder
B.A.Sc. (Eng. Sci.), M.A.Sc. (Elec. Eng.), J.D.
Partner
416.957.1680  email Isi Caulder