China broadens scope for Accelerated Examination

18 July 2017

The State Intellectual Property Office of the People’s Republic of China (SIPO) has recently announced the approval of the Administrative Measures for Priority Examination of Patent Applications (only Chinese version available), which will come into force on 1 August 2017.

Some applicants will be pleased to know that in this updated scheme, SIPO has decided to broaden the range of technologies that are considered eligible for priority (accelerated) examination, as well as opening up opportunities for applicants of utility models and design patents to apply for their applications to be fast-tracked.

What types of applications are now eligible?
Compared to the 2012 version of the Administrative Measures – in which only invention patent applications are qualified for priority examination – the 2017 update includes further types of applications, such as utility models and design patent applications, are now eligible. The current allowable types of applications are:

  1. Invention patent applications at the stage of substantive examination;
  2. Utility models and design patent applications; 
  3. Invention patent applications, utility models and design patent applications at the stage of re-examination; and
  4. Declaration of invalidity of invention patent applications, utility models and design patent applications1.

What types of technological fields are now eligible?
In the current approved set of Administrative Measures, SIPO has prescribed a non-exhaustive list of technical fields which are considered to be China’s key technical fields, including environmental protection, energy conservation, new-generation IT, biotechnology, high-end equipment manufacturing, new energy, new materials, new energy vehicles, and intelligent manufacturing. Invention patent applications involving any of the above technical fields may be applicable for accelerated prosecution.

In addition to the list of fields mentioned above, SIPO now also allows invention patent applications related to internet, big data, and cloud computing to be applicable for priority examination.

What are the other types of circumstances applicable for fast-track?

  1. Pending invention patent applications (or those currently under re-examination) that are about to be implemented or are being implemented, or there is evidence that third parties are currently carrying out the invention;
  2. Pending invention patent applications (or those currently under re-examination) that are filed in China for the first time and then filed in other countries or regions with the same subject matter;
  3. Invalidated applications that are involved in infringement disputes, where the parties concerned have already either applied for settlement at a local IP office, applied for arbitration, or filed a lawsuit before People’s Court (in this case, the local IP office, People’s Courts, or arbitrators may apply for priority examination);
  4. Invalidated invention patent applications that are of great significance to the interest of the State or the public.

What do I need to submit to apply for priority examination?

  • A form for requesting priority examination that has been recognised and endorsed by a local SIPO branch of the relevant province, autonomous region or municipality; and
  • Relevant evidence documents relating to current technology or current design information materials.

What are the respective time limits for bringing a case to conclusion under priority examination?
Upon grant of priority examination status, SIPO shall conclude the case within the following time limits:

  • For pending invention patent applications, issuance of the first notification of examination opinion within 45 days from the date of grant of priority status, and bringing the case to conclusion within 1 year;
  • For pending utility models and design patent applications, 2 months from the grant of priority status;
  • For invention patent applications under re-examination, 7 months from the grant of priority status;
  • For invalidated invention patent applications and utility models, 5 months from the grant of priority status;
  • For invalidated design patent applications, 4 months from the grant of priority status.

The above only serves as a quick guideline to the updated Administrative Measures and some details and information are omitted for simplified reference. If you would like further advice on how to accelerate your application in China or in other jurisdictions (e.g. UK, Europe, and the US), please get in touch.

1For priority examinations that are conducted in accordance with bilateral or multilateral agreements as well as those conducted in accordance with other regulations of SIPO, relevant provisions rather than these Measures shall apply.

Our Expert
Kirwin Lee
Kirwin Lee
Location: London (UK)

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