Elliot ZHOU, Partner and Patent Attorney

 

If the CNIPA issues an office action in a patent application, they will typically give applicants four-month time for responding to the first office action and two-month time for responding to any subsequent office actions. If applicants need more time to prepare a response, they could file a request for extension of deadlines. According to the patent examination guideline, the CNIPA generally allows for a request for one extension of up to two months for responding to an office action.

 

After obtaining the first extension (either one or two months), if the applicants still need more time to prepare the response, it will be up to the CNIPA’s discretion as to whether a second extension of deadline is acceptable. According to our experience, for office actions issued before 2019, there was no guaranteed success for the second extension. But, ever since 2020 the CNIPA seems to have changed the attitude towards the “second extension” and tends to be more willing to accept second extensions, as long as the applicants timely pay the official fees for the second extension prior to the deadlines.

 

Over the past 4 years, Foundin attorneys have requested a number of second extensions for responding to office actions, and the success rate is 100%, suggesting that the CNIPA has indeed become more open on this issue. Although the patent examination guideline still describes that “generally only one extension of deadline is available”, however, the CNIPA has secretly changed their practice and are becoming increasingly flexible on the second extension of deadlines. We also asked the CNIPA officer whether we could request for a third extension of deadline with payment of fees, the officer replied with a blunt “no”.

 

In light of the change of practice, the applicants can now obtain an extension of up to four months for responding to each office action. If the applicants further play the game by intentionally not responding to the office action and subsequently restoring the application upon receipt of the “Notice of Application Being Deemed Withdrawn”, this will surely give applicants another two-month period for responding to an office action. As a result, the total response period could be more than 10 months for the first office action and 8 months for any subsequent office actions, if needed.

 

To this end, it is worth mentioning that the official fees for the second extension are much higher than the first extension. While the first extension for each month is CNY300 (approx. USD44), the second extension for each month is increased to CNY2,000 (approx. USD294). Thus, from the cost perspective, the second extension of deadline is not very recommended unless necessary.

 

Just for a better understanding, you may refer to the table below for the available strategies and official fees for obtaining extensions of deadlines for responding to an office action.

 

 

If you have any questions in relation to this topic or are interested in any other Chinese patent practice, please feel free to contact Mr. Haoyu ZHOU (Elliot) at patent@foundin.cn.