Options for expediting the patent application examination process in China
The examination for a utility model patent application is relatively short under China’s current patent examination system, taking six months to one year to be granted, whereas the examination procedure for an invention patent application is much longer, taking at least 2-3 years to be granted due to the substantial examination.
The applicant, on the other hand, often wants for such a patent to be issued as soon as possible. As a result, the question of how to expedite the examination of a patent application, particularly the examination of an invention patent application, by legal means has become increasingly popular. As a result, let us have a look at some of the methods that are frequently utilized in Chinese patent practice to expedite the examination process.
Patent Prosecution Highway
If one or more claims in a patent application submitted by the applicant to the Office of First Filling (hereinafter simply referred to as OFF) are determined to be patentable by the OFF, a request for accelerated examination of a subsequent application with corresponding claim(s) may be submitted to the Office of Second Filling (hereinafter referred to as OSF).
Conventional PPH and PCT-PPH are the two types of PPH, and conventional PPH is further classified as follows: conventional PPH in the Paris Convention method and conventional PPH in the PCT way.
When a second application is filed to the OSF in the Paris Convention method during the priority period of the OFF application, a request for speeding the examination of the OSF application may be submitted under specified conditions. Both the OFF and OSF applications are filed in the same way as a PCT application enters the national phase, with the exception that a request for accelerated review of the OSF application may be made under certain conditions.
When the applicant of a PCT application receives a favorable written opinion or international preliminary examination report from a specific International Searching Authority or International Preliminary Examining Authority stating that at least one claim of the PCT application is patentable, a request for accelerated examination of the PCT application may be submitted within a pertinent national or regional phase.
The patent application must have been published; the PPH request may be made at the same time as a request for substantial examination of the patent application, or when the patent application has begun the substantive examination process but no notice of the Office Action has been given.
PPH is not a system for countries to mutually recognize the examination results of the substantial examination, so even after the PPH request is approved, it is still crucial to undertake a substantial examination of a patent application or to undertake other examination procedures in accordance with Chinese patent law. That example, a PPH request may be a shorter way to assign the application to an examiner for examination, but once the application is under examination, it follows the standard examination procedure. The examiner will make reference to the application’s examination result in support of the PPH request, but the examination in China is separate from that result.
When making a PPH request, the applicant must normally change the claims of the OSF application to be totally compatible with the claims of the OFF application that have been declared to be patentable, and the OSF application may be updated through the opportunity of a voluntary amendment. In this case, it is recommended that a PPH request be prepared based on the OFF application’s approved and issued patent in order to ensure that the claims are consistent.
The applicant can only make a PPH request twice for one patent application in China, according to present PPH regulations. To put it another way, whether a first request is rejected owing to a formality objection or a serious refusal, the applicant can only resubmit the application once. As a result, it is strongly recommended in practice that the applicant take great care in preparing the documentation for a PPH request for a patent application and ensure that all requirements are fulfilled.
Patent pre-examination
A request for pre-examination of a patent application can be submitted to the local intellectual property protection center by companies and financial organizations that fulfill the relevant industry and regional rules.
A pre-examination report is issued by the regional intellectual property protection center, which performs research and preliminary examine of the patent application. The applicant can make changes to the application documents in response to the official remarks of the patent pre-examination;
After passing patent pre-examination at the local Intellectual Property Protection Center, the applicant must submit application documents to the Patent Office that are coherent with the documents that passed patent pre-examination, and after being approved by the Intellectual Property Protection Center, the patent application examination process will be expedited.
Patent pre-examination requests can be submitted for direct or conventional invention patent applications, utility model patent applications, or design patent applications; nevertheless, patent pre-examination requests cannot be submitted for PCT international applications, PCT international applications that have entered the Chinese national phase, invention and utility model applications filed on the same day, divisional applications, or applications for co-invention.
For invention patent applications, the applicant must respond to the First Office Action notice within 10 working days from the date of issuance, and the applicant must respond to the Second Office Action notification within 5 working days of the date of issuance; and for utility model patent applications, the applicant must respond to the Office Action notification within 5 working days of the date of issuance.
Advance patent publication
The term “patent publication in advance” refers to the applicant’s ability to request that patent application be published in advance of the filing date by submitting a declaration to that effect. Patent publishing in advance is only available for inventive patent applications, and the applications will be published as soon as the Patent Office approves the statement for patent publication in advance.
Requesting patent publication in advance of submitting a patent application can speed up the patent application examination process and reduce the period between filing a patent application and receiving a patent permission.
According to Chinese Patent Law, when an invention patent application is published, the applicant can request that the business or individual who implements the invention pay a fee, therefore obtaining “temporary protection.”
The preceding is only a summary of the many procedures that Chinese attorneys frequently employ to expedite the examination of patent applications.