Written by Haoyu Zhou(Elliot)

 

On December 21 of 2023, the State Council of China published and announced the <Detailed Implementing Regulation of the Chinese Patent Law> (中华人民共和国专利法实施细则). On the same day, the China National Intellectual Property Administration (CNIPA) quickly followed up and published a series of official documents, including:

 

l  <Chinese Patent Examination Guideline 2023> (中国专利审查指南2023),

l  <Interim Method for Patent Examination after the Announcement of Implementing Regulation>

l  <Administrative Review for Patent Term Extension and Patent Open License>;and

l  <Regulation of Patent Filing Behavior>.

 

All the documentations are announced to take effective on January 20, 2024.

 

Among these documents, the <Chinese Patent Examination Guideline 2023> is of most great concerns, as it contains the very details of patent examination rules and practices. One of the revolutionary changes in the new patent regulation is that the restoration of priority claim will be acceptable from January 20, 2024 onwards.

 

According to the patent examination guideline, restoration of priority claim will apply to 

 

(1) Chinese invention patent application or utility model application filed after 12 months but on or before 14 months from the priority date, given that the applicant can provide a sound reason for missing the priority deadline.

 

(2) Chinese national application based on a PCT international application, wherein

-(i) wherein the restoration of priority claim has been accepted by the receiving office (RO) of the PCT application; or

-(ii) wherein the request for restoration of priority claim was not filed at the international stage, the applicant could file a request for restoration of priority claim within 2 months after entry into the Chinese national phase, given that the applicant can provide a sound reason for missing the priority deadline; or where

-(iii) wherein the request for restoration of priority claim has been filed at the international stage but the request was not accepted by the receiving office, the applicant could file a request for restoration of priority claim within 2 months after entry into the Chinese national phase, given that the applicant can provide a sound reason for missing the priority deadline.

 

For the “sound reason” mentioned above, according to our prediction, such will not be seriously examined by the CNIPA, because the same term (“sound reason”) was used and required in other occasions where a simple payment of restoration fees will be sufficient, such as restoration of patent application if the applicant misses the deadline for responding to an office action. Thus, we presume that the CNIPA’s attitude towards restoration of priority claim will be loose. The applicant could just pay the restoration fees and priority claim fees to achieve the purpose.

 

Interestingly, the new examination guideline does not seem to specify whether the CNIPA will adopt “due care” criterion or “unintentionality” criterion for restoring the priority claim in Chinese national patent applications. Such may imply that the CNIPA will accept both grounds of “due care” and “unintentionality” for restoring the priority claim. This is more flexible than European or Japanese standard, and is closer to the U.S. standard.

 

Additionally, it is important to note that only invention and utility model applications are applicable for restoration of priority claims, and design applications would still have to stick to the 6-month priority deadline.

 

If you have any questions in relation to this topic, please do not hesitate to contact me (Elliot ZHOU) at patent@foundin.cn. We will prepare more articles relating to new patent examination guideline in the year to come.