On December 21, 2023, Order No. 769 of the State Council announced the "Decision of the State Council on Amending the Implementation Regulations of the Patent Law of the People's Republic of China", which officially took effect on January 20, 2024. As this revision of the implementation regulations encompasses various aspects, this article provides a summary focusing solely on some provisions related to priority rights.
The latest amendments to the implementation regulations introduce three new provisions concerning priority rights. These are outlined in Rule 36 and Rule 37 of Chapter II, "Patent Application", as well as Rule 45 of Chapter III, "Examination and Approval of Patent Application". The amendments explicitly specify the deadlines for requesting the restoration of priority rights, the addition or correction of priority claims, and the supplementary submission of claims, specifications, or parts thereof by reference the previously filed application documents within the prescribed timeframe. The detailed provisions are as follows:
Rule 36. 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.
According to Rule 6 of the Implementation Regulations of the Patent Law (2010), the right to request restoration does not apply to the deadline specified in Article 29 of the Patent Law, i.e., an applicant who files a subsequent application beyond the stipulated priority period would not be entitled to claim priority. However, with the current amendments, applicants for invention and utility model patents now have the ability to seek restoration of their priority rights if they miss the priority period due to a legitimate reason. This can be done by submitting a request and paying the prescribed fee to reinstate the priority claim. Notably, the term "legitimate reason" in this Rule refers to the situations specified in Rule 6, paragraph 2 of the implementation regulations, which renders the reasons for restoring priority rights quite broad.
Rule 37. 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.
Previously, an applicant was required to declare all claimed priorities at the time of filing the patent application, and could not add priority claims after filing. In this amendment, if there is an error or omission in the submission of priority claims, applicants for invention and utility model patents may request correction or addition of priority claims within 16 months from the priority date or 4 months from the filing date. Moreover, the previous restriction of request of at least one correct item in the priority claim, as stipulated in the patent examination guidelines, has been removed.
It must be noted that this provision is applied with the precondition that the applicant has claimed at least one priority right at the time of filing the application, allowing for correction or addition of other priority(ies) within the specified period. Rule 36 addresses cases where applicants neither submit an application nor claim any priority within the 12-month priority period.
Rule 45. 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 reference 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.
Previously, if the applicant omitted or incorrectly submitted the claims, specifications (including drawings and sequence listing if any) or any parts thereof at the time of filing, supplementing the related documents or contents, the date when the complete documents were submitted would be regarded as the application date even if one or more priorities were claimed. However, priority rights could be claimed based on the initially submitted application documents if still within the priority period.
This amendment explicitly introduces the system of Incorporated by Reference. Now, if an applicant omits or incorrectly submits claims, specifications (including drawings and sequence listing if any) or any parts thereof at the time of filing, and if one or more priorities are claimed in the request of the patent application, and the omission or error is also included in the priority application, the applicant is allowed to correct these by referencing the previously filed application documents. The correction must be made within 2 months from the filing date or within the period specified by the State Council's patent administrative department. Importantly, the initial submission date is maintained as the filing date of the application, unaffected by the supplementary documents.
In summary, the amendments concerning the system of priority rights and the introduction of the system of Incorporated by Reference in the Implementation Regulations of the Patent Law further refine and enhance the system of priority rights. These changes provide applicants with more opportunities for modification and remedies with respect to priority rights. At the same time, they offer a chance for applicants to address deficiencies in subsequently submitted application documents based on the contents of the priority application. The introduction of these provisions significantly guarantees the legitimate rights of applicants.
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.
