Abstract: This article focuses on a brief introduction of some provisions in the newly revised Implementing Regulations of the Chinese Patent Law: the introduction of the principle of good faith; the extensions of the situations of the grace period for not losing novelty and the proof documents thereof; the introduction of priority right restoration, priority right correction and addition, and incorporation by reference; and the changes related to the request for deferred examination.
Keywords: Corrections on the Implementing Regulations; principle of good faith; the grace period for not losing novelty; priority right restoration; priority right correction and addition; incorporation by reference; request for deferred examination
After the fourth amendment of the Patent Law of the People's Republic of China came into effect on June 1, 2021, the revised "Implementing Regulations of the Patent Law of the People's Republic of China" (hereinafter referred to as the "revised Implementing Regulations" or "Implementing Regulations") were announced on December 21, 2023, in accordance with the fourth amendment of the Patent Law. The relevant provisions of the Implementing Regulations were also modified accordingly and came into effect on January 20, 2024. This amendment involves many provisions and matters. As such, the author only provides a brief introduction in the article on the introduction of the principle of good faith, the extension of the grace period for novelty loss and the expansion of proof documents, the restoration of priority rights, the correction and addition of priority rights, the introduction of incorporation by reference, and the changes in the request for deferred examination.
I. Introduction of the Principle of Good Faith
Corresponding to the newly added Article 20 of the Patent Law, the revised Implementing Regulations also added Rule 11, which stipulates, "Patent applications shall follow the principle of good faith. All types of patent applications shall be based on genuine invention and creation activities, and shall not involve fraudulent behavior."
This paragraph clearly states that patent applications shall follow the principle of good faith, with the aim of ruling whether the behavior of patent application submission is based on falsification and not based on genuine invention and creation activities. This ensures that patent applications return to their origin of being innovative in nature. At the same time, it also sets forth a clear requirement for applicants to follow the principle of good faith when submitting patent applications.
Accordingly, relevant paragraphs have also been introduced in the revised Implementing Regulations, specifically in Rules 50 (formerly 44), 59 (formerly 53), and 69 (formerly 65), which clearly specify that preliminary examination of inventions, utility models, and design patents will also include an examination concerning whether violating the principle of good faith. Additionally, this paragraph is introduced as a ground of rejection and invalidation.
Based on such provisions, especially for domestic applicants, it will be necessary in the future to strictly adhere to the framework stipulated by the Law and Regulations when applying for patents. The technical solutions to be protected by the patent applications should belong to the related technologies of the applicant's innovative activities, and should be highly relevant to the applicant's innovative practice. At the same time, the first-hand research and development data should be retained for future proof, if necessary.
II. Extensions of the Exceptions for Novelty Loss and the Proof Documents
Corresponding to the amendment of Article 24 of the Patent Law, Rule 33 (formerly Rule 30) of the Implementing Regulations of the Patent Law has also been amended. The amended paragraphs 2 and 3 of Rule 33 of the Implementing Regulations stipulate that "The academic or technological meeting referred to in Article 24, subparagraph (3) of the Patent Law means any academic or technological meeting organized by a competent department concerned of the State Council or by a national academic or technological association as well as the academic or technological meetings organized by an international organization that is recognized by a competent department concerned under the State Council.
Where any invention-creation for which a patent is applied falls under the provisions of Article 24, subparagraph (2) or (3) of the Patent Law, the applicant shall, when filing the application, make a declaration and, within a time limit of two months from the date of filing, submit certifying documents stating the fact that the invention-creation was exhibited or published and with the date of its exhibition or publication. "
In the amended paragraph 2 in Rule 33 of the Implementing Regulations, it is explicitly stated that the academic conferences or technical conferences that can enjoy the exceptions for novelty loss are no longer limited to those organized by the relevant departments of the State Council or national academic organizations. They have been extended to include the academic conferences or technical conferences organized by them or by international organizations recognized by them. This is a great benefit for applicants, especially for foreign applicants, greatly extending the scope of academic conferences or technical conferences that can enjoy the exceptions for novelty loss.
At the same time, in the amended paragraph 3 in Rule 33 of the Implementing Regulations, the requirements for proof documents to be submitted by the applicant are greatly broadened. The submission requirements have been expanded to require proof of the invention or creation that has been exhibited or published, in addition to proof of the exhibition or publication date. This can include exhibitor directories or conference proceedings, and is typically provided by the organizers. These documents can generally be obtained by the applicant themselves, greatly increasing the convenience of submitting proof documents for the applicant.
Accordingly, for situations where an applicant wishes to enjoy the exception for novelty loss due to participation in an exhibition or academic/technical conference, the difficulty of submitting proof documents has been greatly reduced. For example, exhibitor directories or conference proceedings are generally obtainable through normal channels for the applicants of participating exhibitors, without the need to request a separate certification from the organizers. Furthermore, the extension of the organizers of academic conferences or technical conferences is in line with the current trend of increasing international exchanges, and it further benefits the extension of international conference organizers participating by domestic companies and by foreign companies abroad, promoting technological exchange and advancement.
III. Introduction of Restoration of Priority, Addition or Correction of Priority, and Incorporation by Reference
For implementing the principle benefit to the applicant, the revised Implementing Regulations added Rules 36, 128, 37, and 45. The overall purpose of these new provisions is to maximize the protection of the interests of applicants.
The revised Implementing Regulations added Rule 36, which stipulates that"The applicant, who has expired the time limit prescribed in Article 29 of the Patent Law, may, if there is a legitimate reason, file a request for restoration of the priority within 2 months from the expiration of the time limit with the patent administrative department under the State Council for filing an invention or utility model patent application on the same subject matter."
Meanwhile, for aligning with PCT international applications entering the Chinese national phase, the Implementing Regulations added Rule 128, which states that "Where, after the expiration of the priority period, the Receiving Office in the international phase has approved the restoration of the priority right within 2 months from the international filing date, it shall be deemed that a request for the restoration of the priority right has been made in accordance with the provisions of Article 36 of these Implementing Regulations. Where the applicant does not request the restoration of the priority right in the international phase, or where the Receiving Office does not approve the request for the restoration of the priority right, and the applicant has legitimate reasons, the applicant may, within 2 months from the entry into the national phase, request the restoration of the priority right with the Patent Administration Department under the State Council."
Specifically speaking, the addition of Rules 36 and 128 of the Implementing Regulations provides a legal basis for the restoration of priority for applicants who missed the priority deadline but are still within 14 months of the priority period. It also removes the reservation for restoration of the priority by the China National Intellectual Property Administration (hereinafter as "the CNIPA") as the designated office (DO) and elected office (EO). For PCT international applications that have requested priority, and have approved the restoration of priority by the receiving office within 2 months after the expiration of the priority period, the applicant does not need to go through the restoration formality again when entering the Chinese national phase.
The above two paragraphs also stipulate the deadline for requesting the restoration of priority, which is within 2 months from the expiration of the deadline (including the situation where a PCT international application requests restoration during the international phase), meaning that the applicant must make the request for the restoration of priority within 14 months from the priority date. However, as an exception, for PCT international applications that did not request restoration during the international phase or were unsuccessful in their request, the request for the restoration of priority may be submitted to the CNIPA within 2 months from the date of entering the Chinese national phase.
Applicants requesting the restoration of priority need to submit a request, state the reason, pay the restoration fee and priority claim fee within the deadline, and also submit a copy of the priority application document (except for those that have already been submitted to the International Bureau). It should be noted that the "legitimate reason" or "reason" mentioned in these two Rules substantively corresponds to the reason specified in paragraph 2, Rule 6 of the Implementing Regulations. For PCT international applications, the "unintentional" reason is applicable, and of course, if it falls within the "due care" reason, there is no problem with restoring priority rights.
The newly added Rule 37 stipulates that "The applicant for patent of invention or utility model who claims a priority may request the addition or correction of the priority claim in the request within 16 months from the priority date or within 4 months from the filing date."
Specifically, the newly added Rule 37 of the Implementing Regulations provides a remedy for the applicant's error or omission of the priority claim, with the precondition that the priority claim has been made when filing the application, and the date of correction or addition of priority must be within 12 months before the application date of the present application. This provision also explicitly stipulates the deadline for correcting or adding priority, within 16 months from the priority date or within 4 months from the filing date, before the Patent Office is ready to publish. The applicants need to submit a request for correction or addition of priority to correct or add a priority claim. For requesting to add priority, the applicants shall also pay the priority claim fee.
Similarly, for PCT international applications entering the Chinese national phase, the request for correction of priority may be made at the same time or within two months from the date of entering the national phase. If the applicant has not submitted a copy of the priority application to the International Bureau, the applicant shall also submit a copy of the priority application as a basis for correction when making the request for correction of priority. No new priority can be added in the national phase.
The newly added Rule 45 stipulates that, "For applications for patent of invention or utility model for which the claims, description, or part of the claims or description are missed or incorrectly submitted, where the applicant has claimed a priority on the filing date, he can supplementarily submit the missed or incorrectly submitted documents by referringto the earlier application(s) within two months from the filing date or within the time limit specified by the patent administration department under the State Council. If the supplementarily submitted documents comply with the relevant provisions, the filing date of the first submitted documents will be considered as the application date."
The newly added Rule 45 of the Implementing Regulations provides a remedy for the element or part of the application documents that the applicant missed or incorrectly submitted. Specifically, the applicant may supplementarily submit the missed or correct part(s) by reference to the priority application, thereby retaining the original filing date. However, the missed or incorrectly submitted contents must exist in the copy of the priority application or its Chinese translation if the priority application is in a foreign language, and the fling date of the priority application must be within 12 months prior to the filing date of the present application. This Rule also stipulates the deadline for submitting the request for incorporating by reference and supplementarily submitting documents, i.e., within 2 months from the filing date or within the period specified by the CNIPA to submit a declaration of confirmation for incorporating by reference and supplementarily submit relevant documents.
Similarly, for PCT international applications, if the missed or incorrectly submitted application documents were incorporated into the present application by reference to the priority application in the international phase and the original filing date was maintained, the same Rule is also applicable when the PCT international application enters the national phase in China. In other words, the item of incorporating by reference that the CNIPA has been reserving as the designated and elected office will no longer be reserved.
Applicants who supplementarily submit the omitted or correct parts by reference to the priority application shall claim priority of the earlier application and submit the request for incorporating by reference when first filing the patent application. The applicant shall also submit the declaration of confirmation for incorporating by reference and supplementarily submit relevant documents within two months from the filing date or within the period specified by the CNIPA. If a foreign priority is requested, the applicant shall submit a copy of the priority application document issued by the original authority, as well as the Chinese translation thereof. If necessary, the applicant shall also pay the relevant fees within two months from the filing date or within one month from the date of receiving the notification.
In addition, it should be noted that the provisions of Rule 45 of the Implementation Regulations do not apply to divisional applications, and currently, the newly added Rules36/128, 37, and 45 of the Implementing Regulations cannot be applied simultaneously. That is, the situations stipulated in Rules 36 and 37 of the Patent Law Implementing Regulations do not apply to the provisions of Rule 45 of the Implementing Regulations, and vice versa. However, the addition of the above Rules is also a major benefit for applicants, as it can provide multiple remedial measures for the applicant's errors during the filing stage.
IV. Changes in Deferred Examination Requests
To facilitate the applicant's decision-making, Rule 56 (formerly Rule 50) of the revised Implementing Regulations now includes a newly added paragraph 2, which stipulates that "The patent administration department under the State Council shall, when proceeding on its own initiative to examine an application for a patent in accordance with the provisions of Article 35, paragraph two of the Patent Law, notify the applicant accordingly.
The applicant may file a request for deferring the examination of the patent application."
The newly added paragraph 2 in Rule 56 of the Implementing Regulations explicitly states that the applicant may submit a request for deferring the examination of the patent application, without distinguishing whether it is for an invention, utility model, or design application. Therefore, for all three types of applications, deferred examination may be requested.
It should be noted that a request for deferring the examination for an application of an invention patent must be submitted at the same time of filing the substantive examination request. However, it only takes effect from the date of the substantive examination request coming into force. The deferred period can be 1, 2, or 3 years from the date that the deferred examination request becomes effective. For an application of a utility model patent, the request for deferring the examination must be submitted at the same time of filing the application, and the deferred period is 1 year from the date that the request for deferring the examination becomes effective. For an application of a design patent, the request for deferring the examination must be submitted at the same time of filing the application, and the deferred period is in months, with a maximum of 36 months from the date that the request for deferring the examination becomes effective.
Before the end of the deferred period, the applicant may request to withdraw the request for deferring the examination. If it meets the requirements, the deferred period will end, and the patent application will be examined in order. If necessary, the CNIPA may initiate the examination procedure and notify the applicant, and the requested deferred period will end.
In the above, the author has only briefly introduced the relevant provisions regarding the introduction of the principle of good faith, the extensions of the situations of grace period of not losing the novelty and the proof documents, the restoration of priority rights, the correction and addition of priority rights, the introduction of incorporating by reference, and the changes in requests for deferring the examination together with the provisions of the amended Patent Examination Guidelines. The hope is that this article can facilitate further understanding of the interpretation and application of the legal provisions for applicants. If there are any inconsistencies, please feel free to point them out.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
