Last year, the State Intellectual Property Office (SIPO), (now, the China National Intellectual Property Administration (CNIPA)), announced Administrative Measures for Prioritized Examination[1] (“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.
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The China National Intellectual Property Administration (CNIPA) will be closed from October 1, 2018 to October 7, 2018 for the Chinese National Day holiday. All official deadlines falling on the above dates will be automatically extended to October 8, 2018.  Accordingly, please provide your Chinese counsel with instructions for actions due as soon as possible to avoid a rush immediately after the holiday.
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The China National Intellectual Property Administration (CNIPA) will be closed from September 22, 2018 to September 24, 2018 for the Chinese Mid-Autumn Festival. All official deadlines falling on the above holiday will be automatically extended to September 25, 2018. 
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As of September 1, 2018, the China National Intellectual Property Administration (CNIPA – the new name for the combined China Patent & Trademark Office) will no longer automatically retrieve electronic priority documents from the USPTO via the PDX system.  Instead, CNIPA will retrieve priority documents via WIPO DAS, which will require providing the DAS access code.  The access code is the 4-digit confirmation number listed on USPTO filing receipts and used in the USPTO Electronic Filing System (EFS) and does not need to be requested independently from WIPO.
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This March, the Beijing Intellectual Property Court (the court) held that the deadline for claiming domestic priority is when an applicant completes registration formalities (i.e., pays required fees) and not later, when SIPO actually grants a resulting patent. In an administrative trial ((2015) JingZhiXingChuZi No.:2822), Richtek Electronics Co., Ltd. (Richtek) sued the State Intellectual Property Office (SIPO) based on a Notification that a claim to priority in a later-filed application was deemed not to have been made since the later-filed application was filed after payment of fees but before grant of the parent application.

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Unlike the U.S. Patent & Trademark Office (USPTO) which substantially increased some of its fees as of January 16, 2018[1], China’s State Intellectual Property Office (SIPO) has waived[2] some of its patent fees as of August 1, 2018.  This approach aims at reducing the financial burden to applicants and patent owners, and encouraging patent filings.
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Filing UM and Invention Simultaneously in China

For “products” (generally, mechanical inventions), Applicants can file both a utility model (UM) and invention patent simultaneously[1].The advantage of filing both UM and invention patent applications is that the UM will grant quickly (usually within 6 – 12 months since not substantively examined) thereby providing some patent protection while the invention patent application is undergoing examination, which can take several years. Note though UMs are only valid for 10 years from filing and do not protect methods.  Invention patents are generally considered more valuable than UMs since they last 20 years from filing and have a broader protection scope (i.e., can claim methods).
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China implemented a Patent Prosecution Highway program to expedite examination of invention patent applications in December 2011. In the year of 2016, (the year for which most recent data is available) the China State Intellectual Property Office had received 5,274 requests for expedited examination via the PPH program, among which 1,904 were filed by U.S. applicants and second only to Japanese Patent Office (JPO)[1]. We believe the number of requests will keep growing as USPTO is examining applications faster, which means faster grants and therefore more Applicants will be eligible to take advantage of the PPH in China.

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There are significant differences between U.S. and Chinese patent practice, particularly with respect to Office Action (OA) responses.  U.S. patent practitioners should know about these differences so that (1) when they are drafting U.S. cases to be translated and filed in China, they can avoid submitting claims and doing other things that will not work in China and that will have to either be redone by the Chinese firm before filing or will result in needless rejections and delay, and (2) when they are working with their Chinese counterpart counsel, they can have a better understanding of Chinese practice.

 
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