Amendments related to PCT national phase application in the Chinese Patent Examination Guidelines

Borsam IP
Borsam IP

In order to cope with the revision of China's Patent Law and its implementation rules, the China National Intellectual Property Administration (CNIPA) recently published the " Revised Draft of Patent Examination Guidelines (Draft for Soliciting Comments)", the revised content of the Guidelines is mainly the supporting provisions of the Patent Law and its implementation rules.


1. Major revised content

1.1 Relevant provisions for the improvement of the design system, involving the application document requirements and examination standards for partial design and graphical user interface products, examination of obvious differences in designs, national priority of the design, submission and examination procedures for international design applications, etc.;

1.2 Procedural provisions related to the Patent Cooperation Treaty, involving incorporation by reference, priority restoration, addition, correction, etc.;

1.3 Relevant provisions of patent right term compensation, involving patent authorization term compensation and drug patent term compensation;

1.4 Relevant provisions of the patent open license, involving the proposal and withdrawal of the open license statement, the registration and announcement of the open license, the entry into force and filing of the open license implementation contract, the handling of fee reduction procedures, etc.;

1.5 Relevant provisions on the examination of invalid cases in the early resolution mechanism of drug patent disputes, involving the submission of request and certification documents, the order of examination, the basis of examination, the examination status, and the notice of case closure;

1.6 Relevant provisions for responding to emergencies such as epidemics, involving grace period without loss of novelty, and ex officio extension of the time limit;

1.7 Relevant provisions for improving the quality and efficiency of examination, involving the examination of obvious inventive steps of utility model, the examination of invention patent application involving computer programs, the ex officio examination in the reexamination and invalidation procedures, the provision for the parties to the ownership dispute to participate in the invalidation procedures, the further improvement of the delayed examination system, and the judgments and examples that violate the principle of good faith;

1.8 Relevant provisions for implementing the requirements of “streamline the government, delegate power, and improve government services”, involving matters related to the patent right evaluation report, allowing the submission of color drawings, simplification of the submission method of abstract drawing, exceptions to mandatory agency entrustment, simplification of divisional application procedures, and simplification of submission requirements of sequence listing, etc.; 

1.9 Relevant provisions on institutional reforms, involving adaptive revisions of statement of the Patent Reexamination Board, etc.


2. Introduction to major amendments to PCT national phase applications

2.1 Recognition of incorporation by reference

According to the provisions of the PCT Regulations, where some elements or parts, which are missing or wrong when the applicant files the international application, they may be incorporated by reference of the corresponding parts in the earlier application, and the original filing date shall be retained.

However, before the amendment, as China makes reservations to the above provisions of the Treaty and its Regulations, when the international application enters the Chinese national phase, where the original international filing date is retained through incorporating the missing or correct elements or parts by reference from earlier application, the Patent Office shall not recognize it.

After the amendment, the Patent Office will recognize the original international filing date retained through incorporating the missing or correct elements or parts by reference from earlier application.


2.2 Recognition of priority restoration

If the 12-month priority period is missed when filing an international application, the applicant can submit a priority restoration request within two months.

However, before the amendment, CNIPA did not accept the priority restoration in the international phase, that is, the restored priority was deemed unclaimed.

After the amendment, ordinary national applications in China can also accept priority restoration requests within two months after the expiration of the 12-month priority period, therefore, if the international application claims priority, and the international filing date is within two months after the expiration of the priority period and the priority restoration has been approved by the receiving office in the international phase, the patent office generally no longer raises doubts. In the international phase, if the applicant has not requested the restoration of priority, or has filed a request for restoration but the receiving office has not approved it, and the applicant has justified reasons, he/she can request restoration of priority within two months from the date of entry by submitting a request form for restoration of rights, stating the reason, and paying the priority restoration fee and priority claim fee, if the copy of the earlier application document has not been submitted to the International Bureau, a copy of the earlier application document shall be attached at the same time.


2.3 The transfer agreement no longer needs to be submitted if the transfer request in the international phase was completed

Before the amendment, where a change is made under the item of "applicant" (entity only), the applicant shall, at the time of entering the national phase, submit the contract on the assignment or gift of the right to apply for a patent, the certifying document on the merger of the company provided by the administrative authority of industry and commerce, or other certifying documents relating to transfer of right.

After the amendment, only when the right is transferred from an entity or individual of Mainland China to a foreign individual, enterprise or other type of organization, it is necessary to submit certifying documents (such as a technology export license).


2.4 The substantive examination fee reduction provision when ISA was JP, EP, SE is deleted

Before the amendment, when an international application enters the national phase and the applicant submits the request for substantive examination, if the international search report of the international application is made by one of three International Searching Authorities, the European Patent Office, Japanese Patent Office and Swedish Patent Office, the applicant only needs to pay 80% of the substantive examination fee.

However, the revised guidelines delete the above provisions, and it is possible that in the future, such cases will no longer enjoy the substantive examination fee reduction.


2.5 The drawing of the abstract no longer needs to be submitted separately, it can only be specified in the entering statement

Before the amendment, where the international application contains the drawing of the abstract, a copy of the drawing of the abstract shall be submitted. After the amendment, it can be specified in the entering statement without submitting.


The revision of the Patent Examination Guidelines seems to be a drastic change. In addition to coordinating with the revision of the Patent Law and its implementation rules, many details of the application procedures have also been revised. We will share more details after the amendments to Rules for the Implementation of the Patent Law and Patent Examination Guidelines are finalized.