Administrative Measures on Prioritized Examination of Patent Applications Took Effect as of 1st August, 2017
发布时间：2017.08.07
The administrative measures on prioritized examination of patent applications (hereinafter referred to as “the Measures”) promulgated by the State Intellectual Property Office (SIPO) were came into implementation on August 1st, 2017 The Measures have extended the scope of prioritized examination of, ranging from the new applications to the re-examination applications and invalidation requests for invention, utility models and designs. Secondly, the Measures have set forth a clear set of conditions for prioritized examination to apply, expanded the scope of the circumstances under which prioritized examination will apply. Thirdly, the Measures have made a further simplification on the procedures for prioritized examination. Besides, the Measures have optimized the process of prioritized examination, clarifying the specific circumstances where the prioritized examination procedures will be called of rendering the examination back into the normal procedure due to varied causes.
According to the Measures, where the applications, re-examinations and invalidations of applications or patents relate to the key developing industries or to the products of rapid updates, prioritized examination may be sought after by filing the requests of the same.
The detailed contents of the Measures are attached hereinafter.
Article 1 In order to promote the optimization and upgration of the industrial structure, push forward the implementation of the national strategy in regard to the protection of intellectual property rights and speed up the building of an innovation-oriented country, the present Measures are formulated in accordance with relevant provisions of 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 Implement Regulations of Patent Law”).
Article 2 The Measures are applicable for prioritized examination of the following patent applications and proceedings:
- invention patent applications at the stage of substantive examination;
- utility model and design patent applications;
- reexaminations of invention, utility model and design patent applications; and
- Invalidations of invention, utility model and design patent applications.
However, for prioritized examination that have been conducted in accordance with bilateral or multilateral agreements as well as those conducted in accordance with other regulations of SIPO, relevant provisions rather than the present Measures shall apply.
Article 3 Patent applications and patent reexaminations to which prioritized examination may be granted shall include:
(1) those related to China’s key technical fields including 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-level administrations;
(3) those related to technical fields including the internet, big data and cloud computing, etc., 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 under the enforcement by other parties;
(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 such great significance for the interest of the State or the public that require prioritized examination.
Article 4 Prioritized examination could be granted to invalidation proceedings where:
(1) for infringement disputes concerning invalidations, wherein either side of the both parties concerned have either requested for settlement at the local IP offices, or filed lawsuits before courts or arbitration applications before the arbitral bodies; or
(2) the patents involved in the invalidation proceedings are of great significance for the interest of the State or the public.
Article 5 The filing of request of prioritized examination for patent applications or reexaminations must be in the mutual agreement amongst by all the members of applicants or all the members of reexamination petitioners. The filing request of prioritized examination for invalidation proceedings must be in the mutual agreement amongst all the petitioners of the invalidation proceeding or all the proprietors.
The Local IP offices, people’s courts or arbitral bodies which handle the patent dispute cases could file the request for prioritized examination for the patent invalidation proceedings.
Article 6 The number of approved request for prioritized examination of patent applications, patent reexaminations and invalidations shall be determined by SIPO according to the factors including the examination capabilities in the different specialized technical fields, the number of authorized patents in the previous year, the number of applications pending for examination in the current year.
Article 7 Patent applications or patent reexaminations for which prioritized examination is requested shall be electronic applications at the time of filing.
Article 8 Applicants of prioritized examination requests for invention, utility model and design patent applications shall submit the request for prioritized examination and the information and related supporting documents for the prior technologies or prior designs. Aside from the circumstance as specified in Article 3 (5) of the Measures, the prioritized examination requests shall be signed by the relevant departments of the State Council or the provincial intellectual property office along with the recommendation reasons.
Petitioners to file request for prioritized examination requests for patent reexamination and invalidation proceedings shall submit request for Prioritized examination, as well as related supporting documents. Aside from the circumstances where prioritized examination has already been carried out during substantive or preliminary examination, the prioritized examination requests shall be signed by the relevant departments of the State Council or the provincial intellectual property office along with the recommendation reason.
The Local IP offices, people’s courts and arbitral bodies shall provide their reasons at the time of filing the request for prioritized examination for invalidation proceedings.
Article 9 SIPO shall be responsible for accepting and reviewing the requests for prioritized examination, and promptly notify the applicants of the opinions on such review.
Article 10Upon the approval of the request for prioritized examination, SIPO shall conclude the examination within the following time limits calculating from the date of the approval:
(1) for invention applications, the first Office Action shall be issued within 45 days, and the examination shall be concluded within one year;
(2) for utility model and design applications, the examination shall be concluded within two months;
(3) for patent reexamination cases, the examination shall be concluded within 7 months; and
(4) for invalidation proceedings of invention and utility model, the examination shall be concluded within 5 months, and for invalidation proceedings of design, within 4 months.
Article 11 For applications undergoing prioritized examination, the applicants shall make responses and amendments as soon as possible. The time limit for responding to the Office Action of invention is two months from the date when the Notice is issued. The time limit for responding to the Office Action of utility model and design is 15 days from the date when the Notice is issued.
Article 12 For applications undergoing prioritized examination, SIPO may cease prioritized examination, and render the application back to the normal examination procedure while notify the parties requesting for prioritized examination where shall either of the following circumstances arise:
(1) after the request for prioritized examination is approved, the 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 11 of the present Measures;
(3) applicants submit false materials; or
(4) possibilities of an abnormal application were found in the course of the examination.
Article 13 For a patent reexamination or invalidation proceeding undergoing prioritized examination, the Patent Reexamination Board may cease the prioritized examination and render, the application back to the normal examination procedure while notify the parties requesting for prioritized examination where shall either of the following circumstances arise:
(1) petitioners of reexamination fails to respond within the time limits;
(2) petitioner of invalidation submits additional evidence and reasons after the request for prioritized examination has been approved;
(3) proprietor make amendments to the claims in ways other than deletion after the request for prioritized examination has been approved;
(4) patent reexamination or invalidation proceedings are suspended;
(5) the handling of current proceeding rely on the examination results of other cases; or
(6) the current proceeding is considered to be of great complexity and has been approved by the director of the Patent Reexamination Board.
Article 14 SIPO shall be responsible for the interpretation of the present Measures.
Article 15 The present Measures shall take effective as of August 1st, 2017. The Administrative Measures on Prioritized Examination of Invention Patent Applications enforced on August 1st, 2012 will be abolished simultaneously.