LI, XIWEI
1. BACKGROUND OF DELAYED EXAMINATION PROCEDURE
In September 2019, China National Intellectual Property Administration (hereinafter referred to as CNIPA) Announcement No. 328 amended the Patent Examination Guidelines to officially introduce a delayed examination procedure.
Paragraph 2 of Article 56 of the Implementation Regulations of the Patent Law promulgated on December 21, 2023 provides that an applicant can request delayed examination for patent applications. The Implementation Regulations of the Patent Law (hereinafter referred to as the new regulations) will be effective from January 20, 2024.
The Patent Examination Guidelines (hereinafter referred to as the new Guidelines) issued on the same day inherit the provisions of the Patent Examination Guidelines (2019) on the delayed examination procedure and will also be effective from January 20, 2024.
2. Q&A REGARDING DELAYED EXAMINATION PROCEDURE
The following are questions and answers related to delayed examination that may be of interest to applicants.
Q: Which patent applications can request delayed examination?
A: Chinese patent applications and international applications filed or requested substantive examination on or after November 1, 2019 can request delayed examination.
Q: Is there an additional fee for requesting delayed examination?
A: NO. There is no additional fee to be paid to the CNIPA for requesting delayed examination.
Q: Who can request delayed examination of a patent application?
A: Only applicants for the patent application can request delayed examination.
Q: At what point can a request for delayed examination be made?
A: For invention patents, a request for delayed examination can be filed concurrently with the request for substantive examination.
For utility model patents, a request for delayed examination can be filed when filing the utility model patent application.
For design patents, a request for delayed examination can be filed when filing the design patent application.
Q: Does delayed examination require approval?
A: NO. Delayed examination does not require an examination and will automatically go into effect on the effective date.
Q: When does delayed examination take effect?
A: For invention patents, delayed examination takes effect on the date the request for substantive examination becomes effective.
For utility model patents, delayed examination takes effect on the filing date.
For design patents, delayed examination takes effect on the filing date.
Q: What is the delay period of delayed examination?
A: For invention patents, applicants can choose to delay the examination for 1, 2 or 3 years.
For utility model patents, applicants can only choose to delay the examination for 1 year.
For design patents, applicants can choose to delay the examination for 1-36 months (in 1-month increments).
Q: Where to check the notification of acceptance for delayed examination?
A: For invention patents, the notification of acceptance for delayed examination is recorded in the notification of commencement of substantive examination.
For utility model patents and design patents, the notification of acceptance of delayed examination is recorded in the notification of acceptance of patent application.
Q: Is there a remedy if the deadline for requesting delayed examination is missed?
A: NO. There are no remedies currently available.
Q: Can a request for delayed examination be voluntarily withdrawn?
A: YES. The request for delayed examination can be voluntarily withdrawn by applicants at any time before the expiration of the delay period (including before the delayed examination takes effect).
3. LIMITATIONS OF DELAYED EXAMINATION PROCEDURE
The delayed examination procedure can change the time of commencement of examination, but does not affect other deadlines in the examination process (e.g., the deadline for voluntary amendments to invention patents). For invention patents, the deadline for voluntary amendments remains within 3 months from the date of requesting substantive examination and the date of receiving the notification of commencement of substantive examination of the invention patent application. For utility model patents and design patents, the deadline for voluntary amendments remains within 2 months from the filing date. In addition, the CNIPA may, if deemed necessary, terminate delayed examination, initiate the examination and notify applicants.
4. COMPARISION WITH OTHER SYSTEMS OF DELAY
Among the three timelines of publication, commencement of substantive examination and the grant of patent right, only the commencement of substantive examination can be delayed at the request of applicants. The timeline of publication of invention patent can only be advanced, not delayed, at the request of applicants. The grant of the patent right cannot be delayed at the request of applicants, but can only be delayed by postponing the registration procedures, and the delay is relatively short, involving additional fees for the restoration of the right.
5. APPLICATION OF DELAYED EXAMINATION PROCEDURE
Before the introduction of the delayed examination procedure, applicants for invention patents had limited options in controlling the examination progress: either through accelerated examination (such as Patent Prosecution Highway, priority examination, accelerated preliminary examination, and early publication) or through normal examination.
The introduction of the delayed examination procedure provides applicants more options, such as the possibility of adjusting the examination period by requesting delayed examination to match the marketization timeline of the patent. Specifically, applicants can estimate the time needed to request delayed examination based on the marketization timeline of the patent and make a request accordingly. It should be noted that the delayed examination procedure only ensures that the examiner does not process the case within the delay period after delayed examination takes effect, and it is unknown how long the corresponding patent application will be processed by the examiner after the expiration of the delay period, similar to the situation where delayed examination is not requested.
Applicants can obtain additional time to consider or adjust the scope of protection of a claim with the aid of the delayed examination procedure. Since the deadline for voluntary amendments is not extended by requesting delayed examination, after the expiration of the delay period, applicants can adjust the scope of protection by filing a divisional application or by amending the claims in response to office actions. Since a divisional application can only be filed while the parent case is pending, the expectation is to prolong the pendency of the parent application as long as possible. In practice, requesting delayed examination of the parent application not only prolongs the time the parent application survives, but also prolongs the time for filing a divisional application based on the parent application. Similarly, requesting delayed examination for the divisional application can also extend the time for survival of the divisional application. In this case, if the divisional application also involves a defect of lacking unity of invention pointed out by the Examiner, a new divisional application can be filed accordingly, extending the survival of the entire patent family. It should be noted that, in practice, the defect of lacking unity of invention a divisional application may have existed at the time of filing the divisional application, or may have been introduced when filing voluntary amendments of the divisional application, or may have been introduced in the response to the office action of the divisional application. In order to realize such a patent strategy, applicants should record as many sets of technical solutions as possible in detail in the parent case, so as to file the corresponding divisional applications when protection of corresponding technical solutions is required.
Since the delayed examination procedure prolongs the pending time of the parent case, to ensure timely protection of the corresponding technical solutions in the parent case, the strategy of combining the delayed examination procedure with an early publication procedure can be adopted. Specifically, for the parent application, delayed examination can be requested to obtain more time to adjust the scope of protection of the claims according to the actual situation. For the divisional application, early publication can be requested to expedite the examination progress. In addition, after the publication of the invention patent application, applicants can request the entity or individual implementing the invention to pay appropriate fees, that is, to obtain " temporary protection".
Another advantage of using a combination of the delayed examination procedure with the early publication procedure is that the early-published parent application (assuming that it contains multiple technical solutions with a very large potential scope of protection) serves as a deterrent, forcing competitors to invest more resources in modifying their technical solutions. At the same time, the parent application under delayed examination remains in a "pending" state for a long time, preventing competitors from initiate invalidation proceedings against it.
The examination period for utility model patents is usually shorter than that for invention patents, therefore, similar to the strategy of combining the delayed examination procedure with the early publication procedure mentioned above, applicants can also adopt a strategy of filing a dual application for both invention and utility model. Specifically, applicants can apply for an invention patent and a utility model patent on the same day based on the same or the same set of technical solutions, and request delayed examination for the invention patent. In this way, the utility model patent can be granted relatively quickly to provide protection for the technical solution, while the invention patent gets a long time before examination, allowing applicants to fully adjust the scope of protection of the claims. It should be noted that, unlike the above strategy of combining the delayed examination procedure with the early publication procedure, applicants needs to ensure that the utility model patent in a case of the dual application meets the protection criteria specified for utility models. For example, method patents or material combination patents are not suitable for a dual application.
Applicants can also use the delayed examination procedure to obtain more time to wait for the results of the examination of the foreign counterpart, gaining some reference in the office action in response to the domestic application.
In some cases, applicants can also request delayed examination if, for a number of reasons, they wish to respond to the first office action as late as possible.
The examination period for design patents is usually short. For products with long development cycles, the publication of the design patent often precedes the market launch of the product for which the design patent was issued. The "what you see is what you get" nature of design patents makes them susceptible to imitation. In cases where the patentee is not fully prepared for the commercial application (e.g., how to deal with imitation), the publication of the design is likely to jeopardize the patentee's commercial interests. In such cases, it is a reasonable strategy to request delayed examination when filing the design patent application.
6. CONCLUSION
The introduction of the delayed examination procedure is a significant reform of China's patent system. It complements the three entry speeds into examination of China's patent system: fast (Patent Prosecution Highway, priority examination, accelerated preliminary examination, and early publication) medium (ordinary examination) and slow (the delayed examination procedure), providing applicants with more choices and flexibility. The advantages of the delayed examination procedure mainly include:
- Providing more options for applicants to adjust the examination period based on the marketization timeline of the patent.
- Providing additional time for applicants to consider or modify the scope of protection of the claim.
- Providing applicants with additional means to obtain temporary protection of the corresponding technical solutions while extending the survival of the patent family.
