Deferred Examination System for Chinese Patent

 Borsam IP
 Borsam IP


The amended "Guidelines for Patent Examination", which came into effect on November 1, 2019, added a section "8. Sequence of Examination" to Chapter 7 of Part V. In this section, two special circumstances of "priority examination" and "deferred examination" are further stipulated. These two situations happen to be one fast and one slow. Priority examination is a procedure for accelerating the examination of patent applications that meet the conditions; on the contrary, deferred examination is a procedure for postponing the examination of invention applications and design applications at the request of the applicant. This article will tell you what is delayed review.


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4) Whether it can be withdrawn or amendedNO


Please note that the deferred examination system does not apply to utility model patent applications. And currently there is no procedure of withdrawal, announcement and special public objection.


2. Frequently asked questions and answers

Q: After the deferred examination, will the invention still be published normally?

A: Yes. The deferred examination of an invention is only a defer in entering the period of examination after substantive examination, that is, a defer in receiving the first office action, and the disclosure of the application has nothing to do with the deferred examination.


Q: After requesting the deferred examination, can I request termination without defer?

A: No. Once the request is approved, the time limit for the request must be followed. After the expiration, the application will enter the normal procedure.


Q: Is there a fee for deferred examination request?

A: There is no official fee for requesting deferred examination.


Q: What are the advantages of deferred examination?

A: Before the introduction of deferred examination, generally, the applicant can only defer the examination process of the invention patent application by requesting for extension when responding office action, incomplete revision, etc., which is cumbersome, costly, and uncertain, and will affect the normal examination process. Therefore, the deferred examination provides applicants with greater flexibility while also saving costs.

For inventions patent application, the statutory period for submitting a request for substantive examination is 3 years, and the maximum period for submitting a request for deferred examination is 3 years, so the period for entering the substantive examination procedure is virtually extended to a maximum of 6 years. So in this way, the applicant can have more time to confirm the value of the application, consider its scope of protection, and choose to submit a divisional application. It also makes it impossible for competitors to know the accurate scope of protection of the claims, so that they dare not rashly conduct research and development of similar products to circumvent the design

For design patent application, the deferred examination can shorten the time gap between patent announcement and product launch, help new products to have the greatest visual impact and appeal to consumers, and effectively avoid competitors' imitation.


Q: What are the disadvantages of deferred examination?

A: 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.


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. However, it should be noted that once the deferred examination is approved, it cannot be terminated, so the choice of the deferred period needs to be carefully considered, whether it is in line with its own business layout.