In order to adapt to the changing demands of the new market development, further improve China's patent protection system, and align China's patent protection with international standards, the State Council issued the "Decision on Amending the Implementing Regulations of the Patent Law of the People's Republic of China" on December 11, 2023.
The "Implementing Regulations of the Patent Law of the People's Republic of China" was promulgated by Decree No. 306 of the State Council of the People's Republic of China on June 15, 2001. It underwent its first revision based on the Decision of the State Council on Amending the Implementing Regulations of the Patent Law of the People's Republic of China issued on December 28, 2002, and its second revision based on the Decision of the State Council on Amending the Implementing Regulations of the Patent Law of the People's Republic of China issued on January 9, 2010. The current third revision is in accordance with the Decision of the State Council on Amending the Implementing Regulations of the Patent Law of the People's Republic of China issued on December 11, 2023.
The revised "Implementing Regulations" has come into effect on January 20, 2024. This revision involves significant changes and adjustments to the system, overall representing an important response to the needs of innovation entities and an optimization of the patent legal system.
To assist you in better understanding the significant changes in the revised "Implementing Regulations of the Patent Law" and to better serve your needs regarding patent prosecution and protection, we have summarized and explained the relevant revisions concerning deferred examination.
1. Filing Entity：The applicant may request a delay in the examination of the patent application.
2. Deferred Examination of Invention Patent Applications:
① Timing of Filing: At the same time as the date of the request for substantive examination (which is the date on which the applicant submits the request for substantive examination in accordance with Article 35(1) of the Patent Law and pays the full amount of the examination fee for the invention patent application in accordance with Article 113 of the Implementing Regulations of the Patent Law);
②Effective Date of the Request for Deferred Examination: The request for deferred examination becomes effective from the date of the request for substantive examination;
③ Duration of Deferral: 1 year, 2 years, or 3 years from the effective date of the request for deferred examination.
3. Deferred Examination of Utility Model Patent Applications:
① Timing of Filing: At the same time as filing the application;
② Duration of Deferral: 1 year from the effective date of the request for deferred examination.
4. Deferred Examination of Design Patent Applications:
① Timing of Filing: At the same time as filing the application;
② Duration of Deferral: The maximum duration of deferral is 36 months (deferred on a monthly basis) starting from the effective date of the request for deferred examination.
5. Withdrawal of the Request for Deferred Examination:
Prior to the expiration date of the deferral period, the applicant may request the withdrawal of the request for deferred examination. Where the requirements are met, the deferral period will terminate, and the patent application will be examined in its regular order.
6. The Patent Office’s Initiation of the Examination on Its Own Initiative:
After the expiration of the deferral period, the patent application will be examined in its regular order. If necessary, if the applicant requests a deferred examination but the Patent Office deems it necessary to proceed with an immediate examination, the patent office has the right to initiate the examination process on its own initiative and notify the applicant, without waiting for the expiration of the requested deferral period.
7. Deferred Examination and Patent Term Compensation:
According to Article 42 of the Patent Law, where the patent right for invention is granted after the expiration of 4 years from the date of filing and after the expiration of 3 years from the date of requesting substantive examination, the CNIPA may, at the request of the patentee, grant a patent term compensation for the unreasonable delay in the granting process of the invention patent, except for the unreasonable delay caused by the applicant. According to Rule 79 of the Implementing Regulations, an applicant’s request for a deferred examination is one of the situations where the applicant causes an unreasonable delay. Therefore, the delay caused by the applicant's request for deferred examination will not be compensated.
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