Published by Cloe Loo on 19th April 2013
The State Intellectual Property Office (SIPO) has introduced a fast track system for the examination procedure of patent applications in China.
The Administrative Measures (in Chinese), issued on 19 June 2012, will come into effect on 1 August 2012, allowing for prioritized examination of certain types of invention patents.
What type of application is eligible?
- Important applications relating to energy conservation and environment protection, new generation information technology, biology, high end equipment manufacture, new materials, new energy automobiles
- Important applications promoting the development of green technologies, such as those relating to low carbon emission and conservation of resources;
- Applications for the same invention first filed in China and then in other countries or regions; and
- Other applications which materially affect national or public interests and require prioritized examination
A request for prioritized examination shall be made in electronic form, together with a ‘Form of Request for Prioritized Examination of Invention Patent Application‘ that has been recognized and endorsed by a local SIPO branch of the relevant province, autonomous region or municipality.
The applicant is also required to submit search and examination reports, issued by the patent examination authority of another country or region, such as the UK Intellectual Property Office or European Patent Office. Alternatively, the applicant can submit a search report issued by a recognised and competent entity. However, it remains to be clarified as to what a ‘recognised and competent entity’ is.
Upon receipt of a prioritized examination request, SIPO will review the application and notify the applicants of the result. The grant of a prioritized examination is discretionary, and the number of prioritized examaintions is to be determined by the capacity of the examination division.
From the date of grant of the prioritized examination, SIPO will issue the first Examination Report within 30 working days, upon which the applicant is required to respond or correct any issues raised in the report within two months. SIPO is to bring the case to conclusion within one year from the date of grant of the prioritized examination request. However, if a response to the examination opinion is not received within two months of the first Examination Report, the prioritized status of the application will cease and examination of the application will resume to normal.
Where SIPO has signed a bilateral or multi-lateral agreement with a patent authority of a country that includes prioritized or accelerated procedures, such agreements are to take precedence before the above scheme. For example, SIPO has agreements with a number of countries (Japan, Korea, US, Germany, Russia) under the pilot Patent Prosecution Highway (PPH) scheme.
The prioritized examination scheme is set to provide eligible applications with acceleration of examination. If your patent application is granted prioritized examination, it is important to respond to the first Examination Report within the 2 month deadline in order to maintain its priority status.
Apart from China, accelerated examination is also available in other countries, such as the UK, and Europe (see Accelerated Grant of UK and European Patents), and also specifically for applications relating to green technologies. Further details can be found on our articles (see Accelerated Patent Granting For ‘Green’ Inventions, and Accelerated Granting of US Patents).
If you would like further advice on how to accelerate your patent application in China or in any other country, please call or email us.