The revisions to the Implementing Regulations of the Patent Law of China (2023) and the Patent Examination Guidelines (2023) officially came into effect on January 20, 2024. The key procedural amendments are primarily reflected in the following areas.
1. Addition of Priority Right Restoration and Amendments 1.1 Priority Right Restoration (Rule 36 of the Implementation Regulations, Section 6.2.6.2 of Part I, Chapter 1 of the Examination Guidelines) If an applicant fails to claim priority within the prescribed time limit but files a patent application for an invention or utility model in China for the same subject matter, he may request restoration of the priority right within two months after the expiration of the priority claiming term. Please note that, priority restoration is not applicable to design applications.
For international applications (PCT), If the filing date falls within two months after the priority claiming term, and the receiving office has approved the restoration of the priority right during the international phase, it will be deemed that the request for priority restoration has been submitted in accordance with Rule 36 of the Implementation Regulations; If the applicant did not request priority restoration during the international phase, or if the request was rejected by the receiving office, they may file a request for priority restoration with the China National Intellectual Property Administration (CNIPA) within two months from the entry date into the Chinese national phase.
Please note that, to restore priority, the priority claim must have been made in the application request form at the time of filing. If priority was not claimed initially, restoration is not possible. Priority restoration must be processed under Rule 36 of the Implementation Regulations by submitting a separate request for priority restoration and paying the restoration fee. Rule 6 of the Implementation Regulations does not apply to the priority restoration on reinstatement of rights due to time limit expiration.
1.2 Addition and Correction of Priority Claims (Rule 37 of Implementation Regulations, Section 6.2.3 of Part I, Chapter 1 of Examination Guidelines)
For invention or utility model applications claiming priority, applicants may request to add or correct priority claims in the application request within 16 months from the earliest priority date or within 4 months from the filing date (whichever is later).
→Within 12 months, all three items may be modified (three items: application date, application number, and name of original receiving office of the earlier application).
→Between 12-16 months from priority date or within 4 months from filing date (whichever is later), only one or two items in the above three items may be modified.
The premise of addition of priority claims requires that at least one priority was claimed within 12 months. If no priority was originally claimed, requests to add priority will be deemed not filed.
It should be noted that Rule 37 cannot be used to add expired priorities which should be restored under Rule 36. In addition, when making changes to the priorities that result in an earlier priority date, the new earliest priority date will serve as a start point for subsequent time limit calculations.
2. Addition of Incorporation by Reference (Rule 45 of the Implementation Regulations, Section 2.3.3 of Part V, Chapter 3 of Examination Guidelines)
For invention or utility model applications missing or erroneously submitting claims, descriptions, or portions thereof, if priority was claimed at the time of filing, applicants may supplement the missing content within 2 months from the filing date (or within specified time limits) by incorporating by reference from the priority application. If the supplementary documents comply with the relevant provisions, the filing date of the initial submission shall be regarded as the application date.
The application documents that can be supplemented by incorporating by reference from the priority application include:
(1) Missing claims or descriptions;
(2) Incorrectly filed claims/descriptions or missing/ erroneous portions thereof;
Please note that the supplemental content must exist in the priority document copy and its Chinese translation. In addition, the priority involved in incorporation by reference cannot be a priority that was restored, added, or corrected.
3. Improved Deferred Examination System (Section 8.3 of Part V, Chapter 7 of Examination Guidelines)
The deferred examination system was introduced in 2019, initially allowing only invention and design applications to request deferred examination, with no option to withdraw the deferred examination request once submitted. Under the revised rules, all three types of applications may request deferred examination, and applicants have the right to withdraw a deferred examination request at any time.
The request for deferred examination of the invention application shall be filed by the applicant at the same time as the request for substantive examination, and the deferred period shall be one year, two years or three years from the effective date of the request for deferred examination.
The request for deferred examination of the utility model application shall be filed by the applicant at the same time as filing the application for utility model. The deferred period is one year from the effective date of the request for deferred examination.
The request for deferred examination of the design patent shall be filed by the applicant at the same time as filing the application for design. The deferred period is counted in months, with a maximum of 36 months from the effective date of the request for deferred examination.
After the expiration of the deferred period, the patent applications enter the examination queue in order.
Before the expiration of the deferred period, the applicant may request to withdraw the request for deferred examination. If it meets the requirements, the deferred period will be terminated, and the patent applications enter the examination queue in order.
4. Addition of patent term compensation (only for invention patents)
4.1 Patent Term Compensation for Grant Delays (Rules 77-78 the Implementation Regulations, Section 2 of Part V, Chapter 9 of Examination Guidelines)
Where a patent right for an invention is granted after four years from the filing date and the three years from the date of the request for substantive examination, the patent administration department under the State Council shall, at the request of the patentee, provide patent term compensation for any unreasonable delay in the grant process of the invention patent, except for delays caused by the applicant.
4.2 Patent Term compensation for pharmaceutical patents (Rules 82-83 the Implementation Regulations, Section 3 of Part V, Chapter 9 of Examination Guidelines)
To compensate for the time taken by the marketing approval process of new drugs, the patent administration department under the State Council shall, at the request of the patentee, provide patent term compensation for invention patents related to new drugs that have obtained marketing approval in China. The compensation period shall exceed five years, and the total effective patent term after the new drugs is approved for marketing shall not exceed fourteen years.
5. Revision of the delivery date of notifications for electronic applications (Section 2.4 of Part V, Chapter 6 of Examination Guidelines)
Before the revision, the documents delivered by the China Patent Office in electronic form had a 15-days postal period counted as the delivery date. After revision, the delivery date is the date on which the document enters an electronic system recognized by the recipients. Unless the recipients can provide evidence of the actual date of entry into the electronic system, the issue date of the document will be deemed the delivery date. As a result, the 15-day postal period has been removed for the response deadlines of electronic application notifications. However, for notifications related to paper-based applications, the 15-days postal period remains in effect.
