Administrative Measures on Prioritized Examination of Invention Patent Applications

The state Intellectual Property Office of China (SIPO) announced on June 19, 2012 that it has examined and passed the Administrative Measures on Prioritized Examination of Invention Patent Applications, which took effect as of August 1, 2012.

The complete content of the Measures reads as follows:

Article 1  To facilitate the optimization and upgrade of industrial structure, promote the implementation of the state IP strategies, and expedite the establishment of an innovation-oriented state, this Measures are formulated according to related provisions of the Patent Law  and the Implementation Rules for the Patent Law of PRC China.

Article 2  The SIPO shall grant priority to the examination of the invention patent application that conforms to conditions at the applicant's request, and close the case within one year from the date of approval of the prioritized examination request.

Article 3  Where the prioritized examination is initiated according to the bilateral or multilateral agreements signed between the SIPO and the patent examination authorities of other countries/areas, this Measures are not applicable, and it will be handled in pursuance to related specifications.

Article 4  The invention patent applications that are eligible for prioritized examination include:

    (i) Important patent applications involving technical fields such as energy saving and environmental protection, new generation of information technology, biotechnology, high-end equipment manufacturing, new energy, new materials, new energy vehicles and so on;

    (ii) Important patent applications involving low carbon technology, resources saving and the other technologies that facilitate green development;

    (iii) The initial application in PRC China where patent application on the same subject was first filed in China and subsequently in other countries/areas;

    (iv) Other patent applications that are critical to the state or public interests and require prioritized examination.

Article 5  The quantity of invention patent applications with prioritized examination is determined by the SIPO according to the examination capacity in various expertise fields, the number of patents granted in the previous year, as well as the number of pending applications in the present year.

Article 6  The requests for prioritized examination of invention patent applications shall be filed electrically.

    Where an invention patent application for which prioritized examination is requested has not entered the substantial examination procedure, the applicant shall initiate the substantial examination procedure.

Article 7  When the applicant goes through the formalities of prioritized examination, the following materials shall be submitted:

    (i) A Request Form for Prioritized Examination of Invention Patent Application reviewed and signed with opinions and an official seal by the IPO of the province, autonomous region or municipality directly governed by the central government;

    (ii) A search report in prescribed format issued by a qualified entity with patent search conditions, or the search report and examination result issued by a patent examination authority of other countries/areas and the Chinese translation thereof.

Article 8  The patent search conditions referred to in Paragraph 2 of Article 7 means:

    (i) Satisfying the condition of performing searches by using the patent documents and non-patent literature  as specified in the Patent Examination Guide;

    (ii) The person who conducts patent searches have technical expertise and have received trainings on patent practice and patent searches;

    (iii) Capable of performing searches on the invention patent application for which prioritized examination is requested by a searcher in the corresponding field of art according to the related requirements under the Patent Examination Guide;

Article 9  The SIPO is responsible for the acceptance and review of the requests for prioritized examination, and shall timely notify the applicant of its opinion of the review.

Article 10  Upon accepting an invention patent application for prioritized examination, the SIPO shall timely conduct the process and issue the first Office Action within 30 working days after the approval of the request of prioritized examination.

Article 11  The applicant of an invention patent application for prioritized examination shall reply or make corrections as soon as possible. The time period for the applicant to reply to the Office Action is 2 months. If the applicant delays in response, the SIPO will cease the prioritized examination and treat it as a regular application.

Article 12  The SIPO is responsible for the interpretation of this Measures.

Article 13  This Measures shall take effect as of August 1, 2012.