Xiaofan Chen from AWA Asia’s patent team in Beijing looks at how applicants can streamline the examination of certain patent applications for new and green technologies
The Patent Prosecution Highway (PPH) is often used by applicants to expedite patent examinations. In China, an alternative to speed up examinations is the prioritised patent examination.
Prioritised patent examination is not a new concept in China. It was first introduced in 2012 and most recently amended in 2017 in the Administrative Measures for Prioritised Examination of Patent Applications (Measures). Prioritised patent examination was also formally included in the Patent Examination Guidelines, last revised in November 2019.
The Measures and Guidelines help to meet the strong demand for expedited patent applications given the increasing volume of applications before the China National Intellectual Property Administration (CNIPA) in technical areas that are heavily promoted by the Chinese government, furthering the technological and economic development of China.
Which patents?
For patent applications and re-examinations, applicants can apply for prioritised examination if the patents are related to:
- Energy saving, environmental protection, biology, new-generation information technology, high-end equipment manufacturing, new material, new energy, electric vehicles or intelligent manufacturing;
- Technical fields involving the internet, big data, cloud computing and in sectors with fast evolution in product or technology; and
- Industries encouraged and supported by the provincial and city level governments.
The latest Measures cover invention applications (as had been the case in the past) but for the first time also include utility model applications and designs.
The Measures also extended the coverage of technology areas to include the internet, big data, cloud computing, new generation information technology and smart manufacturing.
It is important to note that prioritised patent examination procedures are available for both Chinese and foreign applicants. Foreign companies should consider this option to speed up patent examination when possible.
How fast?
For invention patents, if the request for prioritised patent examination is accepted, the time to receive the first office action can be significantly shortened to 45 days and the application can be granted, or sometimes in an unfortunate situation rejected within just one year.
For utility model applications and designs, if the request for prioritised patent examination is accepted, the amount of time to receive a grant can be as short as two months.
Companies filing applications in new and green technologies listed above can greatly benefit from such short timeframes.
Overall, the CNIPA’s examination has accelerated because of these Measures when applications meet the eligibility criteria. This reflects China’s ongoing efforts to optimise the business environment and shorten examination and approval periods to stimulate market vitality.
