PATENTS

National Applications (Paris Convention)

Q1: Can a national application in China provisionally be filed in a foreign language? If yes, what is the time-limit for providing a Chinese translation?
A1: No, a national application must be filed in the Chinese language or, in other words, the Chinese translation must be submitted at the time of filing of the application.

International Applications (Patent Cooperation Treaty)

Q2: Does the Chinese Patent Law provide for a provisional national phase entry for a PCT-application in China? If yes, is it sufficient to submit the bibliographic data of the WO-publication?

A2: The Chinese Patent Law and its Implementing Regulations do not provide for a provisional national phase entry of a PCT application in China. In other words, all formalities for national phase entry need to be completed by expiry of the corresponding time-limit.

The time limit for national phase entry in China is 30 months counted from the international filing date or the earliest priority date where a priority is claimed for both PCT Chapters I and II. The time limit can be extended to 32 months by a 2 months grace period upon payment of a corresponding official fee.

Q3: : Is it possible to file the Chinese translation at a later stage?

A3: The Chinese translation of the application documents must be submitted within the time limit for national phase entry i.e. either within the 30 month time limit or, if the grace period is used, within the 32 month time limit.

Q4: Does China as a designated or elected office accept restoration of the priority right according to Rule 49ter.2 PCT?

A4: No, China does not accept the restoration of the priority right according to Rule 49ter.2 PCT.

Examination Request

Q5.1: What is the time limit for filing a request for examination?

A5.1: For both national and international applications according to PCT, the request for the substantive examination needs to be filed within 3 years from the national or international filing date or the earliest priority date where a priority is claimed.

Q5.2: Can the time limit be extended?

A5.2: No, the time limit for requesting examination cannot be extended.

Q6: Can the rights to the application be restored in case it has lapsed due to missing the time-limit for requesting examination?

A6: Yes, there is a time-limit for requesting restoration of rights:

if the time limit has not been observed because of force majeure, the applicant may request the restoration of rights within two months from the date on which the impediment is removed, at the latest within two years immediately following the expiration of that time limit.
if the time limit has not been observed because of any other justified reason, the applicant may request the restoration of rights within two months from the date of receipt of a notification of the application being deemed withdrawn.

With the request for restoration of rights, the omitted act that lead to the loss of rights must also be completed.

Examination Procedure

Q7: When and to which extent can voluntary amendments be filed?

A7: Voluntary amendments can be filed as follows:

National applications:

1) With regard to a patent for invention, the applicant may amend the application documents voluntarily

at the time when a request for substantive examination is made, and
within the time limit of three months after the receipt of the notification of entering substantive examination.

2) With regard to a patent for utility model or design, the applicant may amend the application documents voluntarily within two months from the date of filing.

International applications:

3) With regard to an international application for a patent for invention, the applicant may amend the application documents voluntarily

at the time when the international application enters the national phase under Art 28 or 41 PCT, and
when a request for substantive examination is made, and
within the time limit of three months after the receipt of the notification of entering substantive examination.

4) With regard to an international application for a patent for utility model, the applicant may amend the patent application documents voluntarily within two months from the date of national phase entry.

In each case, the voluntary amendments of the application documents shall not go beyond the scope of disclosure contained in the initial description and claims, including the contents described in the initial description and claims and the contents determined directly and unambiguously according to the contents described in the initial description and claims, and the drawings of the description.

Q8: Is it possible to file a request for examination under the Patent Prosecution Highway (PPH) after national phase entry in China, i.e. is it possible to file a request for PPH if a patent was granted at another designated or elected office after national phase entry? If yes, until when?

A8: A request for PPH can be filed before SIPO after the application has entered the examination stage but before the examination has actually started. In other words, the applicant may file a request for PPH after the receipt of the notification of entering examination and before a first office action has been issued. Generally, a first office action is not issued until 3 months after the issuance of the notification of entering examination.

Q9: How long is the duration between the filing date of examination request and a first office action on average?

A9: The duration between the filing date of examination request and the first office action is not regulated and differs from case to case. Based on experience, a first office action can be expected to be issued within about 4 to 12 months after receipt of the notification of entering substantive examination.

Q10: Is there an expedited examination procedure? How long on average does it take between the filing for this examination and the first office action?

A10: Yes, there is an expedited examination for applications having great significance to the interest of the state or public and applications of which the substantive examination is started on the initiative of the Patent Office. In practice, the special treatment is essentially only applied to domestic first filings in China.

The duration between the filing date of examination request and the first office action in this case is also not regulated and differs from case to case. Based on experience, a first office action can be expected to be issued within about 4 to 7 months after receipt of the notification of entering substantive examination.

Q11: What is the time limit for filing a response to an office action? Can this time limit be extended?

A11: Generally, the specified time limit for filing a response to the first office action is 4 months and the specified time limit for the response to any further office action is 2 months.

The time limit may be extended generally only once by one or two months upon payment of a corresponding official fee.

Q12: How many office actions can be issued during the examination procedure in first instance until a final decision is made?

A11: The number of office actions issued by the first instance examiner until a final decision is issued is not limited and depends on the specific case.

Q13: Is there a limitation to the scope of amendments that can be filed in response to an office action? If yes, do the limitations depend on how many office actions were issued?

A13: The amendment filed in response to an office action shall address the defects as indicated in the Office Action. The amendment shall not go beyond the scope of disclosure contained in the initial application documents (see also Q7).

No, the limitations to the amendments do not depend on how many office actions were issued.

Reexamination Proceedings

Q14: Are there any appeal proceedings before SIPO during the examination procedure?

A14: No, there are no appeal proceedings before the examination department of SIPO during the examination procedure. However, if the applicant is not satisfied with the result of the examination procedure, reexamination proceedings can be requested before the Patent Reexamination Board (PRB) under SIPO.

Q15: What is the time limit for requesting reexamination? Can this time limit be extended?

A15: The time limit for requesting reexamination is three months from the date of receipt of the decision of rejection.

This time limit cannot be extended, but restoration of rights is available (see Q6).

Q16: Is there a reexamination by the first instance examiner before the start of the regular reexamination proceedings?

A16: The first instance examination department which issued the decision of rejection conducts an interlocutory examination before the start of the regular reexamination proceedings. Based on an internal interlocutory examination opinion, the PRB will either issue a reexamination decision to revoke the decision of rejection or will proceed with the reexamination procedure by issuing a notification of reexamination.

Q17: Do the reexamination proceedings allow for amended claim versions to be handed to the first instance in order to redress the present proceeding and to grant allowance to the application?

A17: Yes, the applicant may amend the application at the time of submitting the request for reexamination. The amendments, however, shall be limited to addressing the defects indicated in the decision of rejection and shall not go beyond the scope of disclosure contained in the initial application documents.

Q18: Are there any office actions to be issued during the reexamination proceedings? If yes, under which circumstances are those office actions issued?

A18: Yes, there are office actions such as a Notification of Reexamination during the reexamination proceedings.

The office actions will be issued in any of the following circumstances:

where the decision of rejection is intended to be upheld;
where the decision of rejection can be revoked on the condition that the applicant makes amendments to the application document in accordance with the relevant provisions of the Patent Law and its Implementing Regulations;
where further evidence or explanation is required to be submitted by the applicant; or
where new grounds or evidence that have not been provided in the decision of rejection need to be introduced.

Q19: How long does it take until a decision in respect of the reexamination is made?

A19: It is difficult to estimate how long it takes to obtain a reexamination decision. Generally, it may be 4 months to 1 year after the receipt of the request for reexamination has been accepted.

Q20: Is the reexamination handled by the patent office or a civil court?

A20: The reexamination is handled by the Patent Reexamination Board (PRB) established under the State Intellectual Property Office (SIPO) i.e. under the patent office.

Further Remedies

Q21: What are the legal remedies after an unfavorable reexamination decision? Is it possible to file further claim amendments at this stage of the proceedings?

A21: If the applicant is not satisfied with the reexamination decision, an appeal can be filed to the court within three months from the date of receiving the reexamination decision. During the appeal procedure, the judge only conducts an examination on whether the rejection by SIPO satisfies the regulations of the Patent Law and the Implementing Regulations. In other words, the applicant cannot amend the application during the appeal proceedings.

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