Last year, the State Intellectual Property Office (SIPO), (now, the China National Intellectual Property Administration (CNIPA)), announced Administrative Measures for Prioritized Examination (“the Measures”), which took effect as of August 1, 2017. At the anniversary of the measures, we explain how domestic and foreign applicants can use the measures to expedite examination of their patent applications.
Patent applications are entitled to Prioritized Examination if they:
(1) Relate to industries whose development is prioritized by the State, such as energy conservation and environmental protection, new-generation information technology, biology, high-end equipment manufacturing, new energy, new materials, alternative fuel vehicles, smart manufacturing, etc.;
(2) Relate to industries that are encouraged by local governments; or
(3) Relate to technologies or products that rapidly become obsolete, such as the Internet, big data, cloud computing etc.;
Alternatively, patent applications are also entitled to prioritized examination if
(4) The patent applicant is ready to implement or has already begun implementing the claimed invention, or has evidence that others are implementing their claimed inventions;
(5) The patent applicant filed a patent application(s) on the same subject matter in other countries or regions after filing a patent application for the first time in China; or
(6) Where prioritized examination is otherwise necessary due to great significance to the national interest or public interest. Note the definition for of great significance to national interest or public interest are not defined.
To request prioritized examination, the applicant must submit: (1) A written request for prioritized examination, (2) prior art references from a search; (3) documents supporting that the application falls into one of the related industries or technologies, such as a declaration by the requester declaring that the technology claimed by the application falls into relevant technical field included in Strategic Emerging Industry Key Products and Services Guidance Catalog; and (4) a recommendation from the relevant department of the State Council or the relevant local intellectual property office except if based on foreign filing. Further, note for an invention application, the application should have entered substantive examination.
For an invention patent application, the CNIPA shall issue the first Office Action within 45 days from approval by CNIPA for prioritized examination, and complete the examination by granting or rejecting the application within one year (12 months), as opposed to 22 months of average pendency for invention patent applications according to latest 2017 patent examination statistics. Note according to practice, CNIPA will normally process the prioritized examination request in 3-5 days.
For a UM application or design patent application, the CNIPA will complete formalities examination within two months of approval.
The applicant for invention application needs to respond to any Office Action within 2 months, and the applicant for UM or design applications needs to respond to an Office Action within 15 days. Note the applicant is not entitled to a 15-day grace period on postal delivery which it is otherwise entitled for normal examination. Further, the applicant is not entitled to extensions if the applicant wants to maintain prioritized examination.
CNIPA will cease prioritized examination where:
(1) the applicant voluntarily amends application;
(2) the applicant responds to an Office Action beyond 2 months;
(3) Where the applicant submits false materials; or
(4) Where the patent application is found to be abnormal during examination, such as simply copying a prior application.
Note that while CNIPA has geared prioritized examination towards Chinese applicants and no published mechanism exists for foreigners to use prioritized examination, calls to CNIPA have confirmed that foreigners are not excluded from this program. Further, as there are no local CNIPA branches overseas, a call to ZhongGuanCun IP Promotion Bureau (the Bureau), which is authorized by the Beijing IP office to handle recommendations for prioritized examination, confirmed they would issue required recommendations to foreigners if they meet the above requirements and the foreigner’s retained patent law firm is located in Beijing. Applicants using patent law firms in other cities can obtain the recommendations from the local IP office wherein their retained patent law firm resides.
Accordingly, when PPH is unavailable, applicants can use the prioritized examination program instead, which unlike US Track 1 prioritized examination, is free. Further, the prioritized examination is also available for reexamination and invalidation, which we’ll discuss in another entry.
 Note the applicant or their agent can perform the search on their own, and do not need to submit a formal search report, according to our call with ZhongGuanCun IP Promotion Bureau.
 The measures say the purpose of the measures is to “promote the optimization and upgrading of the industrial structure, pushing forward the implementation of the national intellectual property rights (“IPR”) strategy and the development of China into an IPR power.” See Article 1 of the Measures.
 Published requirements from ZhongGuanCun IP Promotion Bureau only provide instructions for Chinese applicants. See http://zgcip.org.cn.