Administrative Measures for Priority Examination of Patent Applications has come into force on August 1st, 2017

On June 28, 2017, the State Intellectual Property Office promulgated “Administrative Measures for Priority Examination of Patent Applications” ((2017) Order No. 76, hereinafter referred to as the “New Measures”), which has come into force on August 1st, 2017. Compare with “Administrative Measures for Priority Examination of Invention Patent Applications” implemented on August 1st, 2012 (hereinafter referred to as the “Old Measures”), the “New Measures” has optimized the priority examination, such as the scope of the application, the applicable circumstances and procedures. The specific highlights are as follows:

1. Expanding the scope of the application

In the “Old Measures”, the priority examination could only be applied to the invention patent, but the “New Measures” has added the utility models and the design patent. Since the majority application of patent is the utility models in China currently, the “New Measures” would accelerate the application period. In addition, many defendants in the patent infringement cases would apply for the invalidation of a claimed patent, if the patent invalidation proceedings would be heard prior, then the period in dealing with the patent infringement cases would be shortened.

2. Adding the applicable circumstances
Despite the circumstances as prescribed in the “Old Measures”, the “New Measures” has added the following 3 circumstances:

(1) The patent related to the industries which are encouraged and supported on a priority basis by provincial people’s governments or people’s governments of cities with districts are involved;

(2) The patent application or patent review cases involving the internet, big data, cloud computing and other fields and relevant technologies, or products updated in a rapid pace;

(3) The patent invalidation cases which involve patent infringement disputes, and national interests or public interests.

3. Simplifying the requirements on the procedure.

According to the “New Measures”, for a patent application case, the applicant shall submit the materials of a written request for priority examination that has been examined by the relevant provincial intellectual property office which shall also sign off its opinions and affix its official seal thereon, a search report that meets relevant requirements and relevant supporting documents; for the patent appeal and patent invalidation cases, the applicant shall submit the same materials as that for a patent application except for a search report; for the patent appeal cases, if the priority examination has been applied in the substantive examination or preliminary examination procedures, then the applicant shall only have to submit the relevant supporting documents.

Last but not least, it’s worth noting that the “New Measures” has set different durations on the responding period, and examination period based on different categories of patent and the features of each procedures. For example, from the date of consent to the request for a priority examination, the invention patent application case shall be closed within 1 year, the patent appeal case shall be closed within 7 months, and the patent invalidation cases related to invention patent and utility models shall be closed within 5 months.