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On 19 June 2012, the State Intellectual Property Office (SIPO) of the PRC (China) announced the Regulations for Expediting Examination of Invention Patent Applications ("Regulations"), which will take effect on 1 August 2012. The major content of the Regulations are as follows:
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1.
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Upon a request by a patent applicant, the SIPO may expedite the substantive examination of an invention patent application if all the requirements are met. For an invention patent application subject to an expedited examination, the examination shall be concluded within one year of the date of allowing for expedited examination.
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2.
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Where a bilateral or a multilateral agreement between the SIPO and the patent office of another country has been signed with respect to expedited patent examination, expedited examination of patent applications shall be governed by the said agreement, and the Regulations shall not apply.
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3.
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A qualified patent application for which expedited examination can be sought in accordance with the Regulations include the following:
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(1) |
Where the invention covered in the patent application relates to energy saving technology, environmental protection technology, new generation of information technology, biotech, high-end equipment manufacture technology, new energy, new materials, new energy vehicle and other important technology.
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(2) |
Where the invention covered in the patent application relates to low-carbon technology, resource saving technology, and others, which may facilitate the development of green technology
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(3) |
Where the concerned Chinese patent application is the one first filed anywhere in the world for the same invention, and patent application(s) are later filed abroad for the same invention
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(4) |
Where there is a need to expedite the examination so as to ensure the state interest or public interest
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4.
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As to the total number of patent applications allowed for expedited examination, it shall be decided by the SIPO based on the SIPO's examination capacity, the number of patent grants for the previous year, and the number of pending patent applications of the current year in various technical fields.
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5.
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Expediting of patent examination is only allowed for a patent application that is filed electronically. Where a request for expedited examination is filed for an invention patent application, for which the substantive examination has not been requested, the patent applicant must request for substantive examination first.
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6.
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An applicant seeking an expedited examination must submit the following documents to the SIPO:
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(1) |
A transmittal letter (application form) for Expediting Examination of Invention Patent Applications, in which the local patent office of the concerned province, autonomous region and municipality directly under the Central Government has provided its opinion supporting the expedited examination request and has affixed its official chop.
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(2) |
Patent search report(s) issued by a qualified patent searching agency, which meets the formality requirements for patent search, or patent search report(s) issued by the patent office of another country or region as well as its examination result (Chinese translation is needed).
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The so-called "qualified patent searching agency" as stated in Item (2) above refers to the following: (a) where the said agency is equipped with the resources needed for conducting patent searches or non-patent searches as stated in the Chinese Patent Examination Guidelines; (b) where the searchers have technical background and have received patent search training; (c) where the searchers with the concerned technical background may conduct searches based on the patent application under expedited examination.
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7.
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The SIPO is in charge of receiving requests for expedited examination and reviewing of such requests; the SIPO shall inform the applicants of its decisions on such requests in a timely manner.
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8.
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For an patent application allowed for expedited examination, the SIPO shall handle it timely, and issue the 1st office action within 30 days of the sate of allowing expedited examination.
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9.
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For an patent application under expedited examination, the patent applicant shall file the necessary response and amendment as soon as possible. The time limit for filing a response to an office action is 2 months. Where the applicant applies makes a delay in filing a response, the SIPO shall terminate the expedited examination status of the patent application and follow the regular examination track.
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The Regulations is silent on "nationality limitation" of patent applicants seeking expedited examination. In other words, applicants from China or foreign countries may seek expedited examination under the Regulations. However, as stated in Item 6 above, when seeking an expedited examination, the applicant must submit, among others, a transmittal letter (application form) for Expediting Examination of Invention Patent Applications, in which the local patent office of the concerned province, autonomous region and municipality directly under the Central Government has provided its opinion supporting the expedited examination request and has affixed its official chop. The above requirement has spoken the fact that the local patent office has the authority to first decide whether to allows the concerned patent applicants to requesting for expedited examination.
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As stated in Item 2 above, where a bilateral or a multilateral agreement between the SIPO and the patent office of another country has been signed with respect to expedited patent examination, expedited examination of patent applications shall be governed by the said agreement, and the Regulations shall not apply. Since China has reached with Germany, Japan, Korea, USA and Russia the Patent Prosecution Highway (PPH) agreements, patent applicants from the above-mentioned countries cannot seek expedited examination under the Regulations.
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For any qualified patent application, if the patent applicant decides to expedite the examination of his/he patent application, he/she may file a request in accordance with the Regulations on or after 1 August 2012.
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