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 filing procedures, incorporation by reference, and priority system.
Revisions Related to Filing Procedures
1. Changes in the timing of when the request for non-publication of an inventor's name is deemed not to have been made
An inventor can request non-publication of their name when filing a patent application.
Where a request for non-publication of an inventor's name is made after the filing of a patent application, the provision has been amended from "if such request is made after the patent application enters into the procedure of preparation for publication, it shall be deemed not to have been made” to "if such request is made after the patent application is prepared for publication, it shall be deemed not to have been made".
2. Changes in the timing of when the request for declaration of withdrawal of earlier publication and declaration of withdrawal of patent application is deemed not to have been made
Declaration of Withdrawal of Earlier Publication:
The provision has been amended from "after the application enters the preparation of publication, any request made by the applicant for withdrawing the previous request for earlier publication shall be deemed not to have been made, and the application documents shall be published in due course” to "after the application is prepared for publication, any request made by the applicant for withdrawing the previous request for earlier publication shall be deemed not to have been made, and the application documents shall be published in due course".
Declaration of Withdrawal of Patent Application:
The provision has been amended from "where any declaration to withdraw a patent application is submitted after entering the preparation of publication, the application documents shall be published or announced as scheduled, but the examination procedures shall come to an end” to "where any declaration to withdraw a patent application is submitted after it is prepared for publication, the application documents shall be published or announced as scheduled, but the examination procedures shall come to an end".
Note: The time for completing the printing preparations for the publication of patent application documents is generally one month prior to the eighteen-month period stipulated in Article 34 of the Patent Law.
3. Conditions for submitting a request to change the inventor due to omission or incorrect filling
New time requirement: The request should be submitted within one month from the date of receiving the Notification of Acceptance.
Documentation: A proof document with signatures or seals of all applicants (or patentees) and all inventors before and after the change (previously specified as “before the change”). The document should indicate the reason for the change and declare that, it has been confirmed that in accordance with Rule 14 of the Implementing Regulations of the Patent Law, the inventors after the change are all individuals who have made creative contributions to the substantive features of the invention.
4. PCT international applications entering the national phase in China - cancellation of the requirement of submitting a copy of abstract drawing
For an international application with an abstract drawing, the abstract drawing shall be designated in the entry declaration (previously specified as “a copy of the abstract drawing shall be submitted”). The designated abstract drawing should be consistent with the one in the international publication. If it does not comply with the regulations, the examiner may notify the applicant to make rectifications or may designate one ex officio and notify the applicant.
5. Handling of delays in processing procedures for entering the national phase
New provision: Where the applicant has paid the prescribed fees in full within the period specified in Rule 120 of the Implementing Regulations of the Patent Law, but is deemed not to comply with the provisions of Article 121(2) due to errors in filling out the application number or related information, they may request corrections before the Patent Office within one month from the date of receiving the Notification of the Failure of the International Application to Enter the Chinese National Phase.
6. Formalities of patent filing procedures
It is specified that "patent filing procedures shall be conducted in a written form, such as electronic form, paper form, etc., in compliance with the regulations”.
Any patent application conducted orally, via telephone, physical means, fax, email, or other forms shall be deemed not to have been filed and shall have no legal effect, except otherwise specified.
New provision: Conversion of paper application to electronic application
The applicant, petitioner for reexamination, or patent agency may request the conversion of a paper application into an electronic application, except for patent applications that involve national security or significant interests requiring confidentiality.
7. Confidentiality examination of patent applications to be filed abroad
Regarding confidentiality examination for patent applications intended to be filed abroad directly, the time limit for examiners’ review has been supplemented.
The examiners shall conduct the preliminary confidentiality examination of the request for the confidentiality examination of the patent application to be filed abroad. Where the form of the request does not comply with the provisions, the examiner shall notify the requester within two months from the submission date of the request that the request for confidentiality examination is deemed not to have been made. In complex cases, the examiner may notify the requester within four months from the submission date of the request, and the requester may again submit a regulation-compliant request for confidentiality examination of the patent application to be filed abroad.
Where the technical solution is obviously not necessary to be kept secret, the examiner shall notify the requester within two months from the submission date of the request that it or he may file a patent application abroad. In complex cases, the examiner may notify the requester within four months from the submission date of request. Where the technical solution may need to be kept secret, the examiner shall notify the requester that further confidentiality examination shall be conducted and the filing of the patent application abroad shall be suspended. The examiner shall issue the Notification of Confidentiality Examination of Patent Application to Be Filed Abroad within two months from the submission date of the request. In complex cases, the examiner shall issue the Notification within four months from the submission date of the request, and inform the requester of said examination results.
Where the requester is notified to suspend filing the patent application abroad, the examiner shall conduct further confidentiality examination, and if necessary, may invite technical experts in related fields to assist in the examination. The examiner shall issue the Decision on Confidentiality Examination of Patent Application to Be Filed Abroad based on the conclusions of the confidentiality examination within four months from the submission date of the request. In complex cases, the examiner shall issue the Notification within six months from the submission date of the request, and notify the requester of the examination results on whether filing a patent application in respect of the technical solution abroad is permitted.
The following provisions are cancelled: If the requester fails to receive the Notification of Confidentiality Examination of Patent Application to Be Filed Abroad within 4 months from the filing date of its or his request, it or he may file a patent application in respect of the technical solution abroad. If the requester fails to receive the Decision on Confidentiality Examination of Patent Application to Be Filed Abroad within 6 months from the filing date of its or his request, it or he may file a patent application in respect of the technical solution abroad.
8. Date of delivery of notifications
Notifications and decisions delivered through electronic means shall be deemed as delivered on the date of entry into the electronic system recognized by the parties. In cases where the date of entry into the electronic system recognized by the parties differs from the date of issuance of the notification or decision, unless the parties can provide evidence to the contrary, the date of issuance of the notification or decision shall be presumed as the date of delivery. (Previous provision: Where a notification or decision is delivered by post, in person or by electronic means, the l6th day from the date of mailing shall be the date on which the party concerned presumably receives the notification or decision.)
9. Calculation of time limits
Wording adjustment, which clarifies that: the day on which a time limit begins shall not be counted in the time limit and the calculation starts from the following day. (Previous provision: The first day of any time limit shall not be counted in the time limit.)
Revisions Related to Incorporation by Reference
A new Rule 45 of the revised "Implementing Regulations of the Patent Law" clarifies that when a portion of claims, specifications, etc. of an invention or utility model patent application is omitted or incorrectly submitted, the applicant make a supplementary submission within a specified period through incorporation by reference of a prior application. The "Guidelines" provides detailed instructions and standards for these related procedures.
1) Applicable types: invention patent applications and utility model patent applications;
2) Permissible incorporation by reference: claims, description, drawings, sequence listing;
3) Submission requirements: the referenced prior application needs to be claimed as priority when the patent application is filed in China for the first time;
4) Timing of submission: at the time of the initial filing of the patent application;
5) Materials to be submitted: within 2 months from the date of filing the patent application or within a period specified by the CNIPA, the applicant needs to submit a confirmation statement on incorporation by reference (stating the prior application number and indicating the location of the supplementary content in the copy of the prior application) and provide relevant supporting documents.
① For applications claiming a domestic/Chinese priority , it is necessary to submit the application documents (revised/replacement pages) for supplementation.
② For applications claiming a foreign priority, it is necessary to submit the application documents (revised/replacement pages) for supplementation and provide a copy of the prior application issued by the original receiving office along with its Chinese translation;
6) Handling of non-compliant incorporation by reference:
① In cases where the submitted documents do not conform to the regulations in terms of their formats, the examiner will first issue a Notification To Rectify Formalities. If no response or rectification is made within the given timeframe or the documents after rectification still do not comply with the requirements, the examiner shall issue a Notification of Revocation of Patent Application Acceptance, explicitly stating that the statement on incorporation by reference is considered not to have been filed, and the case will be closed accordingly.
② In cases where the supplemented application document is not included in the copy of the prior application or its Chinese translation, the examiner will first issue a Notification to Rectify Formalities". If no response is received within the given timeframe, the examiner shall issue a Notification of Revocation of Patent Application Acceptance, explicitly stating that the statement on incorporation by reference is considered not to have been filed, and the case will be closed accordingly. If, after rectification, the application document is still not included in the copy of the prior application or its Chinese translation but meets other requirements, the examiner shall issue a Notification of Redetermination of Filing Date, determining the date of supplementing the claims or specification as the filing date.
③ In case the application does not comply with the provisions of Article 29 of the Patent Law, Rules 34 and 35 of the Implementing Regulations of the Patent Law, as well as Sections 6.2.1, 6.2.2, and 6.2.5 of Chapter 1 in Part 1 of the Guidelines for Patent Examination, or falls under the circumstances stipulated in Rule 3 and Rule 37 of the Implementing Regulations of the Patent Law, the examiner shall issue a Notification of Revocation of Patent Application Acceptance, explicitly stating that the statement on incorporation by reference is considered not to have been filed, and the case will be closed accordingly.
7) Inapplicable situations:
① Incorporation by reference is not applicable to divisional applications;
② Rule 6(2) of the Implementing Regulations (i.e. a party concerned may request restoration of rights where a time limit is not observed due to other justified reasons than force majeure) is not applicable where the applicant fails to meet the deadline for incorporation by reference;
③ Incorporation by reference is not applicable to applications which fall under the circumstances prescribed in Rule 36 (restoration of priority) and Rule 37 (addition or correction of priority) of the Implementing Regulations.
8) International applications:
The designation method and examination requirements for international application are the same as those for domestic applications. If the copy of the prior application and its Chinese translation do not fully include the content incorporated by reference, the filing date in China will be redetermined based on the information recorded in the PCT/RO/114 form.
If there are apparent examination errors concerning the items or parts incorporated by reference, the examiner will issue a Notification to Make Rectification to inform the applicant to request for change of the relevant filing date in China to preserve the items or parts incorporated by reference, or deletion of the items or parts incorporated by reference without changing the filing date in China. If the rectification is not made within the given timeframe, the examiner will issue a Notification that Application Deemed to be Withdrawn.
9) Cases where the examiner proactively requests applicants to supplement documents:
When it is found during the acceptance process that an invention or a utility model application lacks a specification or claims, or a utility model application lacks drawings, if the application claims a priority, the CNIPA will issue a Notification to Supplement Missing Documents. If no priority is claimed, the CNIPA will issue a Notification of Nonacceptance.
If the applicant goes through the formalities in accordance with the relevant provisions on incorporation by reference and meets the acceptance requirements, the application will be accepted. The CNIPA will issue a Notification of Acceptance, Notification to Pay Filling Fees, or Notification of Decision on Reduction of Fees. If the formalities are not completed or if the requirements for acceptance are still not met, a Notification of Nonacceptance will be issued.
Priority-Related Revisions
I. Domestic Priority for Designs
1. For design patent applications claiming domestic priority:
1) If the prior application is an invention or a utility model patent application, the applicant can file a design patent application for the same subject matter as depicted in the drawings of the prior application.
2) If the prior application is a design patent application, the applicant can file a design patent application for the same subject matter.
2. A prior Chinese application shall not be used as a basis for claiming domestic priority if its subject matter meets any of the following circumstances:
1) it has claimed a foreign priority or a domestic priority, except that a foreign priority or a domestic priority is claimed but not enjoyed;
2) it has been granted a patent;
3) it is a divisional application.
3. Deemed withdrawal:
A prior application is deemed to have been withdrawn as of the date of filing of the subsequent application and can no longer serve as a basis for claiming domestic priority.
However, for design patent applications which claim domestic priority to an invention or a utility model patent application, the provision does not apply. In such cases, the prior application will not be deemed as withdrawn.
II. Addition or Correction of Priority (New Rule 37 of the Implementing Regulations)
1. Time limit: within 16 months from the priority date or within 4 months from the filing date, and before the CNIPA completes the publication preparation.
2. Requirements:
① Priority is claimed at the time of filing a new application;
② A request to add or correct priority is submitted within the specified deadline;
③ Priority claim fee is paid (if adding priority claims).
3. The request should specify the filing date, application number, and the name of the original receiving office of the prior application. If a copy of the prior application document needs to be submitted, the applicant may engage a patent agency to handle it or do it themselves.
4. If one or two of the filing date, application number, and the name of the original receiving office of the prior application are not specified or are incorrect, and the applicant has submitted a copy of the prior application document within the specified period, the examiner should issue a Notification to Rectify Formalities. If no response is provided within the deadline or if the requirements are still not met after the rectification, the examiner shall issue a Notification that Request Deemed Not to Have Been Made.
5. Exclusions:
Rule 6(2) of the Implementing Regulations (i.e. a party concerned may request restoration of rights where a time limit is not observed due to other justified reasons than force majeure) is not applicable where the applicant fails to meet the deadline for addition or correction of priority.
Addition or correction of priority is not applicable to applications which fall under the circumstances prescribed in Rule 36 (restoration of priority) of the Implementing Regulations.
III. Restoration of Priority (New Rule 36 of the Implementing Regulations)
1. Time limit: within 14 months from the filing date of the prior application and before the CNIPA completes the publication preparation.
2. Documents required:
① Submitting a request for restoration of priority: the request should provide a reason for the restoration.
② Paying the restoration request fee and the priority claim fee;
③ Completing any other required procedures, such as submitting a copy of the prior application, translations thereof, proof of assignment of priority, etc. (if necessary, the same requirements as those for claiming priority normally).
3. Notification: The Notification of Decision on Restoration of Rights will indicate whether the restoration is granted or not.
4. Exclusions:
Rules 6(1) and 6(2) of the Implementing Regulations (i.e. a party concerned may request restoration of rights where a time limit is not observed due to force majeure or other justified reasons) are not applicable where the applicant fails to meet the deadline for restoration of priority.
Restoration of priority is not applicable to applications which fall under the circumstances prescribed in Rule 37 (addition or correction of priority) of the Implementing Regulations.
Restoration according to Rule 128 of the Implementing Regulations of the Patent Law (in alignment with provisions relating to PCT international applications):
1) For cases where the priority restoration has been approved by the receiving office during the international phase, the CNIPA generally does not raise further questions, and the applicant does not need to go through the restoration procedure again;
2) For cases where the priority restoration was not approved by the receiving office during the international phase, if the applicant has valid reasons, they may request the priority restoration within two months from the entry date. The formal requirements are the same as those mentioned above. If the requirements are not met, the priority right will be deemed not to have been claimed.
Restoration according to Rule 6 of the Implementing Regulations of the Patent Law (newly added content in the Guidelines for Patent Examination):
An addition in the circumstances where restoration is not granted: Where the subject matter of the prior application is deemed not to have claimed domestic priority because the subject matter has already been granted a patent, the right to request the priority restoration shall not be granted.
IV: Priority Claim in Design Applications:
1. Declaration on priority for international design applications filed under the Hague Agreement and designating China:
If an international design application published by the WIPO includes one or more priority claims, it is considered as having made a written declaration in accordance with Article 30 of the Patent Law.
2. Priority claim for international design applications filed under the Hague Agreement:
If the applicant of an international design application wishes to claim priority, they must submit a copy of the first-filed patent application to the CNIPA within three months from the date of publication of the international design application. If it is not submitted within the deadline, the priority claim will be deemed not to have been made.
If you have any questions on the article above, or need any assistance on IP matters such as patent, trademark, litigation, and protection, please feel free to contact us.
For patent related matters, please e-mail to patent@afdip.com or call us at +86 (10) 82730790.
For trademark, litigation or other legal matters, please e-mail to bhtdlaw@bhtdlaw.com or call us at +86 (10) 82737958.
