Hidden Facts and Figures of Deferred Patent Examination System in China

2021-04-28
Admin
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To provide applicants with more examination mode choices, the examination term can be better coordinated and matched with the market operation of patents to meet the diverse needs of innovative entities. The Guidelines for Patent Examination implemented on November 1, 2019 introduced a new system—the deferred examination system. How is the system running and what is the advantage?

1. The basic concept of the deferred examination system
Section 8.3 of Chapter 7 of Part V of the Guidelines provides that:
“The applicant of a Chinese invention or design patent application can request for deferred examination. A deferred examination request for an invention patent application should be submitted together with the request for substantive examination, but it shall take effect from the effective date of the substantive examination request; a deferred examination request for a design patent application should be made at the filing of the patent application. The period of deferral may be 1, 2 or 3 years from the effective date of the deferred examination request. After the period of deferral expires, the application will be examined in order. However, where necessary, CNIPA may start initiate the examination procedure at its own discretion and notify the applicant that the applicant’s request for the deferral in the examination period expires.”
 
The main aspects of the deferred examination system are summarized as follows:
1) Applicable types: invention, design
2) Time to file:

  • invention: at the same time when filing the substantive examination request;
  • design: at the same time when filing application

3) Optional deferred time: 1 year, 2 years or 3 years
4) Whether it can be withdrawn or amended:NO
 
Please note that the deferred examination system does not apply to utility model patent applications. Given that the deferred examination system is utterly new, it should not be too complicated at the initial stage of operation, so currently there is no procedure of withdrawal, announcement and special public objection.
 
For invention patent applications, the deferred examination system defers the waiting time for being examined after entering the substantive examination stage, rather than the deadline for filing the substantive examination request, which is still within 3 years from the filing date (or priority date, if priority is claimed). In addition, the notification to enter the substantive examination stage will still be issued shortly after filing the substantive examination request  and paying the required fee, so the period for filing the voluntary amendment within 3 months after entering the substantive examination stage will not be deferred.

2. The advantages of deferred examination
. For invention patents
For some original or significantly improved invention patent applications, moderate use of the deferred examination system will prolong the grant term and the time limit for filing divisional applications, so that the competitors may not be allowed to know the exact protection scope of claims, and hesitate to develop similar products to design around, so that the applicant can gain a valuable competition time to leave the competitor behind and win the market.
 
Applicants can also get more time through deferred examination to consider adjusting the layout and protection scope of patent claims, and whether to file more divisional applications or not.
 
ii. For design patents
The examination term for design patent application is relatively short. For some products with a long developing period, the publication date of design patent is often earlier than product launch. Due to the feature of "what you see is what you get" of a design patent, it is easy to be plagiarized. If the owner of a design patent is not ready for commercial use, the disclosure of the design caused by the patent publication will reduce the attraction of the products to consumers to a certain extent, and then affecting the sales of products; Furthermore, competitors may design around of the design and imitate, which will badly impact on products that the company lists. Therefore, companies can solve this problem by filing a deferred examination request.
 
In addition, China intends to join Hague Agreement, which stipulates the applicants can request for deferring publication for industrial designs. The promulgation of the “deferred examination” system also removed institutional barriers for joining the Hague Agreement.
 
3. The disadvantages of deferred examination
The most obvious disadvantage of deferred examination is that it shortens the effective time of patent protection indirectly. In patent commercialization, such as patent licensing and patent valuation, etc., the remaining period of validity of a patent is usually an important consideration.
 
Taking the design patent as an example, the design patent has only a ten-year protection period, if the applicant files a deferred examination when filing the design patent application, assuming the period of deferral is 3 years, plus the time for formal examination and various formalities, when the design is granted, its remaining protection period may be only about 6 years left, which will have a negative impact in patent commercialization.
 
In general, as a new system, it provides applicants with more choices. If it is properly utilized, it will become an effective weapon, providing the applicant with a huge boost in the patent battlefield.