It is often the case that applicants and inventors expect to obtain and exercise their patent right quickly. In general, the applicant usually adopts an early publication of the patent application or a request for PPH to accelerate the examination process of the application. There is also another route available to the applicant to accelerate the examination process of the patent application since the "Measures for the Administration of the Prioritized Examination of Patents" was implemented by the China National Intellectual Property Administration on August 1, 2017. In this Measure, it is stipulated that:
"Rule 10, if the request of Prioritized Examination is allowed by the CNIPA, the application needs to be closed within the following deadline from the date of consent:
(I) The first office action of invention applications will be issued in 45 days, and invention applications will be closed in one year
(II) Utility model and design applications will be closed in two months
(III) The reexamination stage of invention applications will be closed in seven months
(IV) Inventions and utility models in an invalidation case will be closed in five months, designs in an invalidation case will be closed in four months
It can be seen that, for invention applications in the substantial examination stage, this Measure generally reduces the examination period from 2-3 years to a 1 year period. However, while enjoying the benefits of the Prioritized Examination, the applicant should also take into account the adverse consequences that may be brought about by the Prioritized Examination.
1. Opportunities of voluntary amendment may be missed
In this Measure, it is stipulated that:
Rule 12, for a patent application which has been allowed to proceed with Prioritized Examination, if one of the following situations occurs, the CNIPA may stop the procedure of Prioritized Examination, require the patent application to be examined according to the common procedure and notify the requester of Prioritized Examination in time:
(I) after the request for Prioritized Examination is allowed by the CNIPA, the applicant amends the application document according to Rule 51.1 and Rule 51.2 of the Implementing Regulations of the Patent Law;
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When the applicant expects to file a request for Prioritized Examination, the Notification of entering the substantial examination stage and receipt of the examination fee need to be submitted together. Thus, the request for Prioritized Examination can only be filed after the application enters the substantial examination. It is well known that the applicant may make voluntary amendments according to Rule 51.1 of the Implementing Regulations of the Patent Law. However, after filing the request for Prioritized Examination, it is possible to receive the Notification of Approving the Prioritized Examination within 2-4 weeks, and after the request for Prioritized Examination is approved, the first office action of the application will be issued in 45 days. Therefore, if the applicant wishes to make a voluntary amendment after submitting the Prioritized Examination request, the applicant may lose qualification of the Prioritized Examination which has been obtained, due to violating rule 12.1 of the Measures for the Administration of the Prioritized Examination of Patents. If the applicant wants to retain the qualification of Prioritized Examination, then they will no longer be able to make any voluntary amendment. Hence,in the situation where the applicant wishes to submit a request for Prioritized Examination and a voluntary amendment simultaneously, it is advised to file a voluntary amendment first, and then, file the request for Prioritized Examination.
2. Time period for responding to an office action is shortened
In this Measure, it is stipulated that:
Rule 11, For the patent application under the prioritized examination, the applicant should respond to the office action or notification of correction as soon as possible. The time limit to respond to the office action of an invention patent application is two months from when the office action is issued, the time limit to respond to the office action of a utility model or design patent application is fifteen days from when the office action is issued.
For the applicant, when responding to the office action, making appropriate amendments to the patent application document or sufficient and proper arguments plays a crucial role in getting the patent granted. However, in the procedure of prioritized examination, the time limit to respond the office action of a patent application is significantly shortened. With regard to an invention patent application, the applicant is required to respond to the office action within two months from when the office action is issued, which means that the applicant loses half of their preparation time compared with the non-prioritized examination procedure (common procedure). In the common procedure, the applicant has a much longer time period (fifteen days plus four months) to prepare the response to the first office action. Therefore, the applicant is advised to schedule their time reasonably to respond to the office action of the patent application under the prioritized examination, thereby allowing for optimal strategy selection within the time limit in preparation for the most sufficient response.
With regard to some chemical patent applications, the Guidelines for Patent Examination have been amended, with the amendment taking effect on April 1, 2017. In particular, a new section 3.5 is added in Part II Chapter 10 Section 3 of the Guidelines for Patent Examination, item (2) of section 3.4 has been revised and moved to the new section 3.5, and section 3.5 reads as follows:
3.5 Experimental data submitted after the date of filing
Whether or not the description is sufficiently disclosed is judged on the basis of the disclosure contained in the initial description and claims. As to experimental data submitted after the date of filing, the Examiner shall examine it. Technical effects proven by the experimental data submitted after the date of filing shall be those that can be obtained from the disclosure of the application by one skilled in the art.
Therefore, in practice, if the applicant of the chemical application wishes to file supplement comparative experimental data in response to the reference document issued by the examiner in the stage of responding to the office action, a two month time limit is usually not enough to complete complex experiments and analysis of experimental data.
Therefore, before requesting the prioritized examination, the applicant should further consider the actual situation of the patent application (for example, the technical field of the application) to make reasonable preparations. For example, for applications in the chemical or biological field, the applicant should perform prior art searching in advance based on their own conditions, and prepare comparative experimental data in advance based on the search results, so as to be used in response to the office action.
3. Accelerate the rejection of the application
Since the "Measures for the Administration of the Prioritized Examination of Patents" stipulates that an invention application will be closed in one year, if the examiner still considers that the application does not have any grant prospects after they have issued several office actions, the examiner usually directly issues the Notification of Rejection to ensure the examination of application is closed in one year. However, with regard to a common application (with common examination procedure), since there is no explicit time limit for the examiner, the examiner will have more time to discuss the problems with the applicant by means of additional office actions or telephone communications, and offer the applicant a longer time period to make deep considerations and appropriate amendments.
Therefore, compared with the common examination procedure, in the Prioritized Examination procedure, the applicant should adopt a more cautious response strategy. If the applicant fails to sufficiently discuss or make appropriate amendments when responding to the office action so that the patent application is granted, the examiner is likely to reject the application because of the time limit. Thus, the applicant is advised to pay more attention to the application under the Prioritized Examination, and after receiving the office action, fully research the problems indicated in the office action, so as to make the most appropriate amendments and the most sufficient arguments within the time limit, and try hard to convince the examiner.
In addition, with regard to applicants who wish to keep their application alive for a long time, and to file divisional application(s) on the basis of one application, in order to protect the most suitable scope of right or maximize the scope of right, the manner of Prioritized Examination is obviously also not suitable.
In summary, when the applicant wishes to accelerate the examination procedure of a patent application through prioritized examination, there are pros and cons that need to be taken into consideration. Think twice before filing the request for prioritized examination. Make the decision based on the specific patent applicant, technology, industry, marketing, etc. While enjoying the benefits of the prioritized examination, please do take the risks or any unexpected issues that might arise during the procedure into consideration, so as to find the best solution for your patent prosecution.
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.
