China: Newly-Amended PCT Implementation Rules Enforced On July 1, 2017

Amendments adopted by the 47th and 48th PCT Union Sessions have taken effect as of July 1, 2017, touching upon 8 articles and 12 paragraphs in all.

Extension of time limit for Supplementary International Search requests

Background
For further improvement, the time limit for SIS requests is extended to be the same as that of filing international preliminary examination.

Amendment
The time limit of filing a request for Supplementary International Search (SIS) is extended from 19 month to 22 month as of the priority date.
Application scope
Applicable to any international application, as long as the 19 month limit is unexpired on July 1, 2017.

Implications
The SIS system was enforced on January 1, 2009. At present, only 6 international search authorities claim their readiness in carrying out SIS, namely, Austria Patent Office, European Patent Office, National Board of Patents and Registration of Finland, Federal Service for Intellectual Property, Patents and Trademarks, Swedish Patent and Registration Office and Nordic Patent Commission.

For Chinese applicants who plan to enter their patents into national phase, they could request SIS in the targeting country to lower the risk of new prior art being found in the national phase. In addition, by predicting the likelihood of whether the patents could be granted based on the search results, applicants could opt to enter or not to enter a certain country, thereby increasing the granting rate and saving costs.

According to new data, extension of time limit for Supplementary International Search requests could bring the following effects:
a. 3% or 4% of the international applications will obtain international search reports before applicants are asked whether to file for SIS requests, leaving only 2% or 3% of the applications unable to obtain international search reports before the expiration of new time limits.
b. The number of applications obtaining supplementary international search reports before the expiration of international preliminary examination will be reduced.
c. As international search offices still have to complete the SIS report within 28 months as of the priority date, the time left for supplementary international search will be shortened. This would compound the impacts to delayed acceptance caused by the following reasons: failing to comply with formal requests, failing to pay the fees when filing requests or filing for reexamination requests against rejection of unity of invention.

Receiving offices' transfer of prior search and/or classification results

Background
Under the setting that many state offices are dedicated to shortening the examination terms, and considering the fact that international searches have to be carried out within 16 months as of the priority date, more international applications will complete the prior art search for their family applications when performing international search. In some cases, national search reports with written opinions may prove useful for international search authorities. Moreover, it is increasingly common for national offices to provide classification number for family applications prior to international search. However, it's pitiful that it lacks relevant regulations in the current PCT procedures on international offices' transfer of the above mentioned classification results.

Amendments
Receiving offices shall transfer the prior art search and/or classification results to international search authorities.

The transfer of the prior art search and/or classification results by receiving offices could be carried out without the explicit authorization of the applicants, except:
a. receiving offices have to inform the international office before April 14, 2016 that their domestic laws are not in conformity with the above regulation.
b. even if a receiving office conforms to the above regulation, it shall inform the international office before April 14, 2016 that it allows applicants to apply for not transfer the prior art search results when filing PCT applications.

Application scope
Applicable to any international applications with international filing date on or after July 1, 2017.

Implications
a. At least in principle, the new procedure would not put on too much burden on receiving offices. First, the "quit" mechanism allows a receiving office to decide not to transfer the prior art search and/or classification results without the consent of an applicant or if such procedure goes against the domestic law. Second, a receiving office is often the first receiving office or the state office that carry out search and/or classification before international search. A receiving office only has to transfer the above made results to international authority. Third, prior art search and/or classification result only has to be transferred in its original language without any translation. Fourth, thanks to the eSearchCopy program initiated in 2013, receiving office could send the registration documents through wire and then the international office will provide the prepared search documents to international search authority. In this sense, eSearchCopy greatly reduced the costs of printing and mailing search documents, simplified the transfer mode and increased efficiency as a result.

b. The sharing of the prior art search and/or classification results is conductive to increasing the consistence between international search report and examination result in the national phase, and reducing the workload.

The designated office shall transfer the national phase information in a timely manner

Background
The information of national phase and the subsequent state change information are very crucial to users of patent information, which is helpful in determining whether the disclosed information could be used without obtaining licensing. However, it is hard to acquire such information.

Amendments
A designated office shall transfer to international office the information involving entering of national phase, national publication and granting.

The information required to be transferred include:
a. information on entering national stage
b. national publication number
c. national publication number and date
d. patent granting date, relevant publication number and publication date; the time limit of notification is two months after the occurrence of relevant events.

Application scope
Applicable to any international application with the actions mentioned in article 22 and 39 fulfilled on or after July 1, 2017.

Implications
a. More states of national stage of PCT applications are seeable in the PatentScope system when pressing the "national stage" button. Regular national application information includes patent opposition(before and after granting), patent rejection and invalidation, the issuance of forced licensing, etc. Apart from being published on PatentScope, such information could also be provided to other patent information providers in batches. The information will be incorporated into a search system for easy identification of technologies that have entered the public domain. The international office will develop an integrated system connecting all state offices/organizations so as to automatically update the states of new applications.
b. A designated office could collect all requested information through email, PCT-EDI, ePCT and IPAS and transfer them to international office.

Delete "incompatible rules" in priority requests and priority document translations

Background
In the 27th session of PCT Union in September 1999, by amending Rule 4.10, applicants could file priority requests before WTO members that have not entered PCT in their international applications filed on or after January 1, 2000. A transitional provision was included in this amendment, which could be used by a designated office to notify the international office that this amendment is not compatible with its national law. At first, there were two designated offices that notified the international office of such incompatibility. Afterwards, the European office, as a designated office, withdrew the incompatible notification. The withdrawal took effect on December 13, 2007, after which no inconformity notification remained in effect. Rule 4.10 (d) was thus deleted.

In the 28th session of the PCT Union on March 2000, the new Rule 51bis.1(e) indicated that a designated office was allowed to require a translation, provided that the validity of the priority claim is relevant to the determination of the patentability of the invention. In the meantime, the session also passed the new Rule 51bis.1(f), allowing a designated office to notify the international office that Rule 51bis.1(e) is not compatible with the national law applied by the office. At first 7 designated offices notified the international office of such incompatibility. Spanish Patent and Trademark Office notified the international office withdrew the incompatible notification which took effect on November 3, 2013, after which no such notification were in effect. 51bis.1(f) is thus deleted.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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