Policy Interpretation-Order of the State Intellectual Property Office (No. 76)

The Measures for the Administration of Patent Priority Examination, which were deliberated and adopted at the executive meeting, are hereby issued and shall come into force on August 1, 2017.

director shen changyu

27 June 2017

Measures for the Administration of Patent Priority Examination

Article 1 In order to promote the optimization and upgrading of the industrial structure, promote the implementation of the national intellectual property strategy and the construction of a strong intellectual property country, serve innovation-driven development, and improve patent examination procedures, in accordance with the Patent Law of the the People's Republic of China and the Detailed Rules for the Implementation of the the People's Republic of China Patent Law (hereinafter referred to as the Detailed Rules for the Implementation of the Patent Law), these Measures are formulated.

Article 2 These Measures shall apply to the priority examination of the following patent applications or cases:

Application for a patent for invention (I) the substantive examination stage;

(II) utility model and design patent applications;

Reexamination of patent applications for (III) inventions, utility models and designs;

Invalidation of patents for (IV) inventions, utility models and designs.

Where priority examination is carried out in accordance with bilateral or multilateral agreements signed between the State Intellectual Property Office and patent examination institutions of other countries or regions, these Measures shall not apply in accordance with the relevant provisions.

Article 3 A patent application or patent reexamination case under any of the following circumstances may request priority examination:

The (I) involves energy conservation and environmental protection, new generation information technology, biology, high-end equipment manufacturing, new energy, new materials, new energy vehicles, intelligent manufacturing and other national key development industries;

(II) involves industries that are mainly encouraged by the people's governments at the provincial level and at the city level divided into districts;

(III) involves the Internet, big data, cloud computing and other fields and the technology or product update speed is fast;

(IV) the applicant for patent or the applicant for reexamination is ready to implement or has started to implement, or there is evidence to prove that others are implementing the invention-creation;

Where the (V) first filed a patent application in China for the same subject matter and then filed an application in another country or region;

(VI) other national interest or public interest of great significance to the priority review.

Article 4 A case of invalidation under any of the following circumstances may request priority examination:

(I) a patent infringement dispute involved in a case of invalidation occurs, the parties have requested the local intellectual property office to handle the case, filed a lawsuit with the people's court or requested arbitration and mediation organization for arbitration and mediation;

The patents involved in (II) invalidation cases are of great significance to the national or public interest.

Article 5 A request for priority examination of a patent application or a patent reexamination case shall be subject to the consent of all the applicants or all the applicants for reexamination; a request for priority examination of a case of invalidation shall be subject to the consent of the applicant for invalidation or all the patentees.

The local intellectual property office, the people's court or the arbitration and mediation organization that handles or tries the patent infringement dispute may file a request for priority examination of the case of invalidation.

Article 6 The number of priority examination of patent applications, patent reexamination cases, and invalidation cases shall be determined by the State Intellectual Property Office based on the examination capabilities of different professional and technical fields, the number of patent authorizations in the previous year, and the number of pending cases in the current year.

Article 7 A patent application or patent reexamination case requesting priority examination shall adopt the electronic application method.

Article 8 Where an applicant makes a request for priority examination of an application for a patent for invention, utility model or design, it shall submit a request for priority examination, existing technology or existing design information materials and relevant supporting documents; except for the case of Item 5 of Article 3 of these Measures, the request for priority examination shall be signed and recommend by the relevant department of the State Council or the intellectual property office at the provincial level.

Where a party makes a request for priority examination of a patent reexamination or invalidation case, it shall submit a request for priority examination and relevant supporting documents; except for patent reexamination cases that have been given priority examination in the substantive examination or preliminary examination procedure, the request for priority examination shall be signed and recommend by the relevant department of the State Council or the provincial intellectual property office.

Where a local intellectual property office, a people's court, or an arbitration and mediation organization submits a request for priority review of an invalidation case, it shall submit a request for priority review and explain the reasons.

Article 9 After accepting and reviewing a request for priority review, the State Intellectual Property Office shall promptly notify the person requesting the priority review of the review opinions.

Article 10 If the State Intellectual Property Office agrees to conduct priority review, it shall close the case within the following time limits from the date of consent:

(I) the application for a patent for invention shall be notified of the first examination opinion within 45 days and the case shall be closed within one year;

(II) utility model and design patent applications are closed within two months;

(III) patent reexamination cases are concluded within seven months;

The case of invalidation of (IV) invention and utility model patents shall be concluded within five months, and the case of invalidation of design patents shall be concluded within four months.

Article 11 The applicant shall make a reply or correction as soon as possible with respect to the patent application that has been given priority for examination. The time limit for the applicant to reply to the notice of examination opinions on invention patents shall be two months from the date of issuance of the notice, and the time limit for the applicant to reply to the notice of examination opinions on utility model and design patents shall be fifteen days from the date of issuance of the notice.

Article 12 For a patent application for priority examination, under any of the following circumstances, the State Intellectual Property Office may stop the priority examination procedure, deal with it according to the ordinary procedure, and promptly notify the person requesting priority examination:

After the (I) priority examination request is approved, the applicant proposes to amend the application documents in accordance with the first and second paragraphs of Article 51 of the Implementing Regulations of the Patent Law;

(II) the time limit for the applicant's reply exceeds the time limit stipulated in Article 11 of these Measures;

(III) the applicant to submit false materials;

The (IV) is found to be a non-normal patent application during the examination process.

Article 13 For a patent reexamination or invalidation case under priority examination, under any of the following circumstances, the Patent Reexamination Board may stop the priority examination procedure, handle it according to the ordinary procedure, and promptly notify the priority examination requester:

The (I) review requester gives an extended reply;

After the (II) priority review request is approved, the person requesting the invalidation shall supplement the evidence and reasons;

After the (III) priority review request is approved, the patentee modifies the claims by means other than deletion;

The (IV) patent reexamination or invalidation procedure is suspended;

(V) cases rely on the review conclusions of other cases;

(VI) difficult cases and subject to the approval of the Director of the Patent Reexamination Board.

Article 14 The State Intellectual Property Office shall be responsible for the interpretation of these Measures.

Article 15 These Measures shall come into force as of August 1, 2017. The Measures for the Administration of Priority Examination of Invention Patent Applications, which came into effect on August 1, 2012, shall be repealed at the same time.

Xiaobian interpretation:

This order is a further sublimation of the "Administrative Measures for Priority Examination of Invention Patent Applications" (No. 65) in June 2012. The move is to promote the optimization and upgrading of the industrial structure, promote the implementation of the national intellectual property strategy, and accelerate the construction of an innovative country. From the "patent priority examination management approach" details can be seen:

1., both the time limit for closing the application and the time limit for the applicant to reply are shorter than those for ordinary applications. That is to say, relying on the efficiency improvement of both the examiner and the applicant, we can truly realize the early authorization of high-quality inventions and creations, and ensure the interests of the applicant to a greater extent.

2., if the patent infringement dispute involved in the invalidation case or the patent involved in the invalidation case is of great significance to the national interest or the public interest, they can apply for priority examination, which greatly shortens the time limit from patent application to authorization. The Patent Law stipulates that "after the publication of an application for a patent for invention, the applicant may require the entity or individual implementing the invention to pay an appropriate fee." However, it should be noted that according to the provisions of the rules for the implementation of the Patent Law, only after the patent applied by the patent applicant is authorized, it has the right to request the patent enforcement department or the court to sue the user to "pay a certain fee". This blank period is clearly detrimental to the applicant. Patent priority examination can greatly shorten the length of the blank period and protect the rights and interests of applicants.