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16 October 2017
On June 28 2017 the State Intellectual Property Office (SIPO) released the new Administrative Measures for the Prioritised Examination of Patents, which took effect on August 1 2017. Applicants in China and abroad, as well as other relevant parties, can take advantage of the measures to obtain the examination results of relevant patent applications or patents more quickly.
Article 2 of the measures stipulates that prioritised examinations can be sought for:
Notably, the measures do not apply to patent applications that are undergoing a prioritised examination according to the Patent Prosecution Highway procedures.
According to Article 3 of the measures, the patent applications and re-examination cases for which a prioritised examination may be requested mainly concern:
According to Article 4 of the measures, a prioritised examination may be requested for a patent invalidation case where:
Further, Articles 3 and 4 of the measures stipulate that a prioritised examination may be granted in cases that are of great interest for the state or the public.
Article 5 stipulates that the following petitioners may request a prioritised examination:
Where there is more than one rights holder, they each must agree to the filing of a prioritised examination request. In the case of an infringement dispute, the local IP office, people's court or arbitration or mediation organisation in charge of the case may file a prioritised examination request for the patent at issue.
Article 8 of the measures stipulates the documents required for filing a prioritised examination. In particular, applicants must submit with their request for prioritised examination the recommendation opinions, with official seals, of the relevant:
Where the prioritised examination request is filed for an application that was first filed in China and subsequently in other countries or regions with the same subject matter, the opinions of the relevant State Council department or provincial IP office are not required. As regards patent applications for which a prioritised examination is requested, the applicant must also provide information regarding the prior art or existing designs and other relevant documents as evidence. Relevant documents must also be provided as evidence in the case of prioritised examination requests for invalidation cases in the case of an infringement dispute.
Article 10 of the measures stipulates that where a prioritised examination is approved, the SIPO must meet the following time limits:
Similarly, the times in which applicants must reply to office actions have been shortened as follows:
For re-examination or invalidation cases, a response must still be made within one month from the date of receipt of the official notification.
Nonetheless, if the petitioner requests an extension for responding to an office action or a notification, the prioritised examination procedure will be ceased and the case will be examined according to ordinary procedure. Similarly, as regards patent applications undergoing a prioritised examination, if the applicant makes amendments on its own initiative, the prioritised examination procedure will be ceased and the case will be examined according to ordinary procedure. In the case of an invalidation case undergoing a prioritised examination, where the petitioner for invalidation supplements arguments and evidence, or the patentee amends the claims in a manner other than deletion, the prioritised examination procedure will be ceased and the case will be examined according to ordinary procedure. A prioritised examination in a re-examination case and an invalidation case may also be ceased if:
The new measures represent the SIPO's efforts to foster the development of an innovative economy. In addition, they exemplify the SIPO's careful approach to conducting prioritised examinations. The measures stipulate that the SIPO will determine the number of prioritised examinations based on various conditions, such as:
For further information on this topic please contact Guangyu Zhang or Zhenzhen Wang at Wanhuida Peksung by telephone (+86 10 8231 1199) or email (email@example.com or firstname.lastname@example.org). The Wanhuida Peksung website can be accessed at www.wanhuida.com and www.peksung.com.
This update was edited from an article originally published in IPPRO Patents (Issue 37).
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