Most notably, the amendments pave the way for a seamless integration with the Patent Law Treaty (PLT), offering a more applicant-centric approach that makes protecting innovations on a worldwide scale easier. This alignment with the PLT is a clear indicator of China's dedication to removing barriers for inventors and companies around the globe, ensuring that the Chinese patent system is more accessible, efficient, and in tune with the international community.
1 New ‘incorporating by reference’ rule to maintain original filing date
Previously, applicants could not maintain the original filing date if any part of the specification, claims, or drawings was missing or incorrectly submitted. They lacked the option to correct these by incorporating or supplementing the missing or correct parts from the priority application. In this revision, the Implementation Regulations of the Patent Law added a new ‘incorporating by reference’ rule to solve this issue. The new rule provides applicants with the option to maintain the original filing date by supplementing claims, specifications, or parts thereof that are omitted or erroneously submitted from the original patent filing if the supplemented document was included in the priority application.
The Guidelines for Patent Examination provide more details on how to implement this new rule: documents that can be incorporated by referencing the priority application may include:
- (1) omitted claims or specifications;
- (2) erroneously submitted claims, specifications, or parts of claims or specifications that are missing or erroneously submitted; the content of the supplemented documents should have been included in the copy of the priority application and its Chinese translation thereof.
Although not explicitly included in the text of IRPL, this new rule also applies to drawings. Specifically, GPE clarifies that for PCT applications entering national stage in China, drawings are considered as “part of the specification” for the purpose of incorporating by reference.
With this new rule, IPRL and GPE are aligned with the requirements under Article 5 (6)(b) of the PLT by allowing supplementing by reference to maintain the original filing date.
2 New rule for adding or correcting priority claims
Before the revision, all priority claims must be made in the original filing, and priority claims cannot be added or corrected once the application is filed. In this revision, IRPL added a new rule to solve this issue. The new rule provides that if the application claims priority in the original filing, even if part of the priority claims has been omitted or incorrectly filed, applicants can still request to add or correct the priority claims at issue. GPE provides additional details on the timing of filing the request. The request for adding or correcting needs to be filed within 16 months from the priority date or within 4 months from the application date, and before China National Intellectual Property Administration (CNIPA) completes preparing for publication. GPE also detailed the content of the request, the fee for the request, and this new rule does not apply to design patents.
With this new rule, IPRL and GPE are aligned with the requirements under Article 13 (1) of the PLT by allowing adding or correcting priority claims.
3 New rule for restoring right of priority claims
Before the revision, after the period for claiming priority (12 months for invention and utility model patent application) expires, priority claims can no longer be made, and there is no remedy to restore the right of priority. The revision introduces a new rule allowing applicants to request the restoration of priority rights for applications filed between 12 and 14 months after the priority date with justifiable reasons. GPE further requires that a priority claim needs to be requested at the time of filing, and the timing for requesting restoration is within two months from the expiration of the 12-month period from the filing date of the priority application and before the CNIPA completes preparing for publication.
The extension of 2 months is the same as what most other patent offices require for their PCT national stage entry and will be easy for applicants to remember. As for the criteria of the delay, most of the other PCT participating offices require a mix of “unintentional” and/or “all due care was taken to observe the time limit”. However, the IRPL uses “justifiable reasons” as the criteria for the delay. Whether this will result in any differences in practice is remained to be seen from actual cases.
With this new rule, IPRL and GPE are aligned with the requirements under Article 13 (2) of the PLT by providing remedy for restoring right of priority after the priority period expires.
Yet to be tackled
One major remaining difference between the IPRL and the PLT is the language requirement to establish the filing date. As required by Article 5 (2)(b) of the PLT, the “part which on the face of it appears to be a description” should be accepted in any language for the purpose of establishing the filing date. However, the IPRL and GPE still require the entire application to be filed in Chinese language to establish the filing date.
Conclusion
Addressing final barriers like the language requirement effectively could further streamline the application process for international stakeholders, potentially increasing the volume and diversity of innovations protected under China's patent system. As China further refines its patent laws, the ongoing efforts to harmonise with international standards like the PLT highlight the country's commitment to creating a more accessible and efficient patent application process for inventors worldwide.
FICPI's view and involvement
FICPI uniquely combines education and advocacy on topics around patents and trade marks, with a focus on developing the professional excellence of its individual members. FICPI Forums, Congress, committees and meetings are opportunities to gather insights from the international IP attorney community on any issue, whether it be practice-related or topics of patent and trade mark law.
Next steps
- Search for FICPI members in China by navigating to the FICPI member directory and searching by country.
- Consider getting involved in FICPI Study & Work Groups, such as Group 3 (CET 3): International Patent Matters.