Tips for For­eign Ap­pli­cants to Uti­lize Pri­or­i­tized Patent Ex­am­i­na­tion in China

China's Foreign Trade (English) - - Law & Case - By Han Wei­wei, Liu Qi

Pri­or­i­tized patent ex­am­i­na­tion is an ef­fec­tive way in short­en­ing the ex­am­i­na­tion cy­cle, ben­e­fits patent ap­pli­cants, and may con­trib­ute to economic devel­op­ment, and it is of­ten called a “green path”. Since the State In­tel­lec­tual Prop­erty Of­fice of China (here­after re­ferred to as “SIPO”) is­sued an “Ad­min­is­tra­tive Reg­u­la­tions of Pri­or­i­tized Patent Ex­am­i­na­tion” ( here­after re­ferred to as “Reg­u­la­tions”) which took ef­fect as of August 1, 2017, more and more do­mes­tic and for­eign patent ap­pli­cants are tak­ing ad­van­tage of this pri­or­i­tized patent ex­am­i­na­tion sys­tem. As of the end of 2017, 29 patents have en­tered the pro­ce­dure of pri­or­i­tized patent ex­am­i­na­tion in front of the Re­ex­am­i­na­tion Board of SIPO, and two de­sign patents sur­vived in val­i­da­tions. Fur­ther­more, ac­cord­ing to sta­tis­tics avail­able at the web­site of Zhong­guan­cun State In­tel­lec­tual Prop­erty Model Park which rep­re­sents the Bei­jing In­tel­lec­tual Prop­erty Of­fice to pre­lim­i­nary re­view on the qual­i­fi­ca­tion for pri­or­i­tized patent ex­am­i­na­tion in Bei­jing area, 1,090 ap­pli­ca­tions met the cri­te­ria and passed pre­lim­i­nary ex­am­i­na­tion. And as far as learnt by the authors, some ap­pli­ca­tions have been granted with a patent by uti­liz­ing this green path.

The ma­jor­ity of ap­pli­ca­tions en­ter­ing this sys­tem are do­mes­tic ones. For­eign ap­pli­cants also pos­sess the de­sire to make use of and pass this “green path”. In this ar­ti­cle, we will in­tro­duce the re­cent up­date on pri­or­i­tized patent ex­am­i­na­tion and ad­vise how for­eign ap­pli­cant may ap­ply this sys­tem.

Which op­tion(s) may be ap­pli­ca­ble by for­eign ap­pli­cants?

The Reg­u­la­tions pre­scribes that, if a Chi­nese patent ap­pli­ca­tion mea­sures up one of the six op­tions as fol­lows, it will qual­ify to re­quest the pri­or­i­tized ex­am­i­na­tion: 1. It in­volves the na­tional key devel­op­ment in­dus­tries, in­clud­ing but not lim­ited to en­ergy con­ser­va­tion and en­vi­ron­ment pro­tec­tion, new gen­er­a­tion of in­for­ma­tion tech­nol­ogy, biotech, high-end equip­ment man­u­fac­tur­ing, new en­ergy, new ma­te­ri­als, new en­ergy ve­hi­cles, in­tel­li­gent man­u­fac­tur­ing; 2. It in­volves key devel­op­ment in­dus­tries which are en­cour­aged by the provincial gov­ern­ments and pre­fec­turelevel city gov­ern­ment; 3. It in­volves the fields of tech­nolo­gies re­lat­ing to in­ter­net, big data, cloud com­put­ing and that tech­nolo­gies or prod­ucts evolve rapidly; 4. The patent ap­pli­cant or the ap­pli­cant re­quest­ing re-ex­am­i­na­tion gets every­thing ready to im­ple­ment or has al­ready started to im­ple­ment, or has shown that a third party is im­ple­ment­ing its in­ven­tion-cre­ation; 5. It should be the first fil­ing in China and be claimed as the pri­or­ity for the fil­ing a patent ap­pli­ca­tion in an­other coun­try or re­gion on the same sub­ject mat­ter; 6. Other sit­u­a­tions that has sig­nif­i­cant in­ter­ests for China and the public, and there­fore need to be ex­am­ined as a pri­or­ity. For for­eign ap­pli­cants (which means that all ap­pli­cants are out­side of China), the most prob­a­ble way for a for­eign ap­pli­ca­tion is Op­tion 5. Namely, for the Chi­nese patent ap­pli­ca­tions ap­plied for the first time, the for­eign en­ti­ties should feel free to re­quest pri­or­i­tized ex­am­i­na­tion, given that they have their cre­ation-in­ven­tion or de­signs firstly filed in China and claim the first-fil­ing Chi­nese patent ap­pli­ca­tion to other coun­tries or re­gions.

Op­tions 1 and 3 are also pos­si­ble for for­eign ap­pli­cants. If the in­ven­tion be­longs to the tech­ni­cal fields ex­em­pli­fied in Op­tion 3, it can be en­tered into pri­or­i­tized ex­am­i­na­tion. As for whether an in­ven­tion be­longs to na­tional key devel­op­ment in­dus­tries, it is sug­gested to check doc­u­ments is­sued by the gov­ern­ment, for in­stance, “the guid­ance cat­a­logue of the strate­gic emerg­ing in­dus­tries and key prod­ucts & ser­vice” is­sued by Chi­nese Na­tional Devel­op­ment and Re­form Com­mis­sion, which may be up­dated an­nu­ally. Fur­ther, SIPO also is­sued a “Cat­a­log of In­dus­tries Mainly Sup­ported by In­tel­lec­tual Prop­erty” (2018 ver­sion) on Jan­uary 17, 2018, which may serve as a ref­er­ence.

If the in­ven­tion of a patent ap­pli­ca­tion has been im­ple­mented or is go­ing to be im­ple­mented, or it has a risk of be­ing in­fringed in the fu­ture, for in­stance, com­peti­tors are man­u­fac­tur­ing the prod­uct cov­ered by the ap­pli­ca­tion, Op­tion 4 may be suit­able. This may pro­vide some so­lu­tions for in­ven­tions hav­ing prospects on the mar­ket.

On the other hand, a Chi­nese patent ap­pli­ca­tion jointly owned by both a Chi­nese and a for­eign en­tity shall also en­joy pri­or­i­tized ex­am­i­na­tion, so that all the suf­fi­cient doc­u­ments for re­quest­ing the pri­or­i­tized ex­am­i­na­tion can be in good prepa­ra­tion by the Chi­nese coowner. In prac­tice, for­eign ap­pli­cants with Chi­nese sub­sidiaries or af­fil­i­ates, given that their Chi­nese ap­pli­ca­tions/ patents be­long to any of the ap­pli­ca­ble sit­u­a­tions, may take this mea­sure to ac­cel­er­ate the ex­am­i­na­tion. In case of the joint ap­pli­cants, the re­quest for the pri­or­i­tized ex­am­i­na­tion shall be con­sented by all the co-ap­pli­cants.

In ad­di­tion, for an in­val­i­da­tion case, pri­or­i­tized ex­am­i­na­tion may be ini­ti­ated: (1) if it in­volves a patent in-

fringe­ment case, the par­ties in ac­tion have al­ready re­quested the lo­cal patent de­part­ment to set­tle, or sub­mit the case to the court, or re­quest the Ar­bi­tra­tion me­di­a­tion or­ga­ni­za­tion for ar­bi­tra­tion and me­di­a­tion; or (2) the patent to be in­val­i­dated has sig­nif­i­cant in­ter­ests for China and the public.

In re­cent years, for­eign paten­tees are ac­tive in en­forc­ing IP rights in China. A fast de­ci­sion made by the Re­ex­am­i­na­tion Board may fa­vor en­force­ment. As re­ported by the Re­ex­am­i­na­tion Board, in the two in­val­i­da­tion cases which were ex­am­ined via pri­or­i­tized ex­am­i­na­tion, de­ci­sions were is­sued in around two months from re­ceipt of the re­quest for pri­or­i­tized ex­am­i­na­tion. This is a good sign for paten­tees, es­pe­cially when the patents are sta­ble and of great value on the mar­ket.

Pro­ce­dures and doc­u­ments re­quested for fil­ing a re­quest for pri­or­i­tized ex­am­i­na­tion

The pre­req­ui­site for a Chi­nese patent ap­pli­ca­tion to be qual­i­fied for pri­or­i­tized ex­am­i­na­tion is that the ap­pli­ca­tion shall be an E-fil­ing case, and the ap­pli­ca­tion has been pub­lished and en­tered into sub­stan­tive ex­am­i­na­tion. By tak­ing dif­fer­ent op­tions, the doc­u­ments re­quested may dif­fer to some ex­tent. Take an in­ven­tion patent as an ex­am­ple.

No mat­ter which op­tion is adopted, one com­mon doc­u­ment re­quested is a re­quest form. Some ba­sic in­for­ma­tion shall be in­cluded in the form, in­clud­ing ap­pli­ca­tion num­ber, type of in­ven­tion, name of the pe­ti­tioner, con­tact per­son as well as the phone num­ber and ad­dress of the con­tact per­son. Fur­ther, the ground for pri­or­i­tized ex­am­i­na­tion shall be in­di­cated. If the above Op­tion 5 is ap­plied and if the Chi­nese ap­pli­ca­tion is the first filed ap­pli­ca­tion of a PCT ap­pli­ca­tion, the PCT ap­pli­ca­tion num­ber shall be laid out. If other op­tions other than Op­tion 5 is cho­sen, the opin­ion of the rec­om­men­da­tion author­ity shall be pro­vided. Last but not the least, in­for­ma­tion on sup­port­ing ma­te­ri­als, such as prior art ref­er­ences, shall be set forth in the re­quest form.

Other com­mon doc­u­ments are prior art ref­er­ences rel­e­vant to the Chi­nese patent ap­pli­ca­tion. It is worth not­ing that prior art ref­er­ences are used to fa­cil­i­tate the ex­am­iner to ac­cel­er­ate the ex­am­i­na­tion. For Patent doc­u­ments, only the doc­u­men­ta­tion se­rial num­bers and pub­lished date, in­di­cat­ing the rel­e­vant para­graph or pic­ture num­bers, are suf­fi­cient; and for non-patent doc­u­men­ta­tion, such as mag­a­zines or books, it is sug­gested to pro­vide full pages or rel­e­vant pages.

Be­sides the re­quest form, other sup­port­ing ma­te­ri­als will be re­quested.

For in­stance, other rel­e­vant sup­port­ing doc­u­ments, which refers to the doc­u­ments that would prove that the case falls into one of the sit­u­a­tions de­scribed in the Reg­u­la­tions. Some ex­am­ples are listed in the form be­low.

Time­lines for pri­or­i­tized ex­am­i­na­tion

Bear­ing crit­i­cal time­lines in mind may help bet­ter uti­liza­tion of the sys­tem and mon­i­tor progress. Some im­por­tant time­lines have been listed in the ta­ble be­low for ref­er­ence (only for patent ap­pli­ca­tions).

In con­clu­sion, the pri­or­i­tized ex­am­i­na­tion is an ef­fec­tive way for for­eign ap­pli­cants to ob­tain a patent in a sig­nif­i­cantly short­ened pe­riod, and also ben­e­fi­cial for patent own­ers who de­sire to en­force patents in an ex­pe­dited man­ner.

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