Patent Accelerated Examination Overview
Patents, as a critical aspect of intellectual property, are regarded as essential strategic resources for corporate development and have become a core competitive advantage for businesses. As such, knowing how to efficiently and effectively navigate the application and examination process is instrumental to any company wishing to protect and enhance its position. Below we provide a brief overview on the procedures related to the accelerated patent examination.

 

1. Explanation of Accelerated Examination Procedures

• Priority Examination: The China National Intellectual Property Administration (CNIPA) provides priority examination for patent applications that meet certain conditions based on the applicant's request or as a matter of right, in accordance with its "Management Measures for Priority Examination of Patents". This accelerates the examination process for patent applications.

• Quick Pre-examination: The Intellectual Property Protection Center offers pre-examination of patent applications for entities on record. CNIPA expedites the examination of patent applications that have undergone pre-examination at the Protection Center, reducing the patent application grant cycle.

• PPH (Patent Prosecution Highway): When an applicant submits the same or similar applications in multiple countries and if the first office where the application was filed, i.e., the Office of First Filing, believes that at least one or more claims can be granted, as long as the subsequent applications filed with another patent office meet certain conditions, including substantial correspondence of claims between the two applications and the work results of the first filing office can be used by the subsequent filing office, the applicant can request accelerated examination of the corresponding claims in the subsequent application, i.e., the Office of Second Filing (OSF).

 

2. Applicable Types of Cases

• Priority Examination: Invention patents in the substantive examination stage, utility models and design patents that have been filed and paid for, patent reexamination, patent invalidation.

• Quick Pre-examination: New applications for inventions, utility models, and design patents, patent reexamination, patent invalidation, patent right evaluation reports (subject to specific services offered by local protection centers).

• PPH (Patent Prosecution Highway): New inventions, utility model, and design patent applications.

 

3. Application Offices

• Priority Examination: CNIPA Patent Office.

• Quick Pre-examination: Intellectual Property Protection Center.

• PPH (Patent Prosecution Highway): CNIPA Patent Office.

 

4. Patent Acceleration Application Timing

• Priority Examination: For invention patents, during the substantive examination stage; for utility model and design patents, upon filing and payment.

• Quick Pre-examination: Before submitting the patent application.

• PPH (Patent Prosecution Highway): When the first-time application submitted to the CNIPA is deemed by it as having at least one or more claims that can be granted.

 

5. Application Conditions

• Priority Examination:

(1). Involvement in key national development industries, such as energy conservation, environmental protection, new-generation information technology, biotechnology, high-end equipment manufacturing, new energy, new materials, new energy vehicles, and intelligent manufacturing.

(2). nvolvement in industries encouraged by provincial and municipal governments.

(3). Involvement in areas related to the internet, big data, cloud computing, where technology or product updates are rapid.

(4). The patent applicant or requester for reexamination is prepared or has already initiated implementation, or there is evidence that others are implementing the invention or creation.

(5). The first-time submission of a patent application in China on the same subject, followed by applications in other countries or regions.

(6). Other circumstances of significant importance to national or public interests that require priority examination.

 

• Quick Pre-examination: Meeting the local pre-examination requirements, the applicant being an enterprise or institution, and the need for pre-examination registration at the local Intellectual Property Protection Center. Applicants who have undergone pre-examination registration can apply for pre-examination.

 

6. Examination Timeframes

Priority Examination:

• Invention patents: Within 45 days, the first examination opinion notice is issued, and the case is concluded within one year.

• Utility model and design patents: Concluded within 2 months.

• Patent reexamination: Concluded within 7 months.

• Patent invalidation declaration: Invention and utility model patents concluded within 5 months, design patents concluded within 4 months.

Quick Pre-examination:

• Invention: 3-6 months.

• Utility model: 1-2 months.

• Design: 5-7 working days.

PPH (Patent Prosecution Highway):

• For inventions, it takes approximately 11 months from the PPH request to conclusion.

 

7. Advantages

• Priority Examination: Accelerated examination speed.

• Quick Pre-examination: The patent pre-examination system offers a short examination cycle, non-statutory procedures, a focus on patent quality, and a focus on innovation in industries and new technologies.

• PPH (Patent Prosecution Highway): Fast approval, cost savings, and a high approval rate. The time from the PPH request to conclusion is approximately 11.9 months, with an average of one Office Action (OA), and an approval rate that is higher than the normal route. Additionally, the CNIPA does not charge official fees for PPH.

8. Disadvantages

• Priority Examination:
1. May lose the opportunity for voluntary amendments.
2. Reduced preparation time for responding to office actions (2 months for inventions, 15 days for utility models and designs).
• Quick Pre-examination:
1. May lose the opportunity for voluntary amendments.
2. Reduced preparation time for responding to office actions (10 working days for the first OA for inventions, 5 working days for the second OA for inventions, and 5 working days for utility model designs).
• PPH (Patent Prosecution Highway): After approval in the first country, expediting examination in the second country is based on the scope of authorization in the first country, which can be highly unfavorable for the patent's scope of authorization in the second country.

 

9. Not Applicable to:

• Priority Examination: When the applicant proposes modifications to the application documents in accordance with Article 50, Paragraphs 1 and 2, of the Implementing Regulations of the Patent Law.

• Quick Pre-examination:

1. PCT international applications or applications under the Patent Cooperation Treaty (PCT) entering China.

2. Cases with dual applications.

3. Divisional applications.

4. Cases requiring a secrecy examination.

Conclusion

The above article provides an overview of patent acceleration procedures. Nevertheless, whether or not to expedite the examination process and which method to choose should be considered by the applicant based on their specific circumstances and objectives.