Fast or Slow? — Accelerated and Deferred Examination in Chinese Patent Examination Procedures

Introduction

In today’s fast-paced market environment, the efficiency and flexibility of patent examination procedures are vital for protecting innovation and maintaining competitive advantage. The China National Intellectual Property Administration (CNIPA) offers both accelerated and deferred examination systems, providing applicants with flexible options to meet their specific needs and adapt to dynamic market demands and technological advancements.

1. Accelerated Examination
2. Market Demand and Competition Pressure

Enterprises need to quickly transform innovative technologies into market advantages to create value. Accelerated examination allows companies to obtain patent grants rapidly, securing a competitive edge. For high-tech and startup companies, rapid patent grants can prevent competitors from imitation and infringement, protecting core technologies.

2. Rapid Technology Iteration

In emerging technology fields like AI, communication, and assisted driving, technological development is extremely fast. Accelerated examination ensures that companies secure effective patent protection within the technology’s lifecycle, avoiding missed business opportunities due to lengthy examination periods.

3. Enhancing Global Patent Layout

In a globalized context, enterprises need to conduct patent layouts in multiple countries/regions. By obtaining positive patent grants through accelerated examination in China, companies can leverage international patent cooperation treaties to expedite protection in international markets, enhancing their global influence and competitiveness.

1. Summary for Accelerated Examination Procedures
2. Pre-examination

   Definition: Pre-examination involves formal and substantive examination services provided by local intellectual property protection centers for enterprises meeting specific industrial requirements. CNIPA recognizes these pre-examination results as grant status for patent applications.

   Applicable Conditions: Applicants must be registered in a protection center’s location, meet technical field requirements, and possess basic IP knowledge.

   Examination Period: Invention patents can be granted within 3-6 months, while utility model and design patents can be granted within 1-3 months.

   Remarks: This procedure involves a local protection center issuing a grant notification on behalf of CNIPA. Rejection by the center does not mean the application is unpatentable; applicants can still file a regular application with CNIPA later.

2. Prior Examination

   Definition: Based on CNIPA’s regulation issued in 2017, the examination department conducts substantive examination upon the applicant’s request.

   Examination Period: Invention patents receive the first office action within 45 days and should be completed within one year. Utility model and design patents can be completed within two months.

   Remarks: This is an accelerated option for regular applications, similar to the PACE program of the EPO but distinct from pre-examination.

3. Patent Prosecution Highway (PPH)

   Definition: PPH allows applicants to use positive examination results from one patent office to expedite examination in another participating office.

   Examination Period: Significantly shorter than standard examination, with faster grant decisions.

   Remarks: PPH enhances efficiency and reduces duplication of efforts in multiple jurisdictions.

4. “Belt and Road” Patent Accelerated Examination Pilot Project**

   Definition: Announced by CNIPA in September 2024, this project provides accelerated examination for patent applications from countries participating in the “Belt and Road” initiative. The Turkish Patent and Trademark Office is the first participant.

III. Deferred Examination

Applicable Technical Fields

Deferred examination is suitable for fields characterized by high technical uncertainty, long R&D cycles, unpredictable market changes, and the need for long-term protection.

1. Biopharmaceutical Field

Biopharmaceutical technologies, such as new drug development, require lengthy clinical trials and substantial funding. Applicants tend to delay examination to obtain patent grants when the technology or market conditions are growing. The patent term compensation system ensures maximum market exclusivity after the drug launch, allowing companies to recover R&D investments and generate profits.

2. Advanced Manufacturing/New Materials Field

These technologies are complex and have high innovation uncertainty. Companies delay examination to maintain confidentiality before the technology is mature, preventing premature imitation by competitors. Deferred examination also allows companies to assess market trends and make informed decisions.

Market Strategy

1. During the formulation of international, national, and industry standards, applicants can adaptively modify claims to align with relevant standards.
2. Applicants can adjust the patent examination flexibly according to market changes. Deferred examination provides more time to observe the market, ensuring that the timing of patent grants is coordinated with market operations.

Patent Quality Perspective

The deferred examination system provides applicants with additional opportunities to refine the specification, thereby enhancing both the overall quality and the scope of protection. Applicants can revise the claims during the examination period in response to technological advancements and market changes, ensuring that the scope of patent protection is broader and more precise. There may be an opportunity to benefit from the latest examination policies, such as supplementary experimental data, storage media in computer technology, and protection of program products.

1. Summary for Delayed Examination Procedure

Definition: Deferred substantive examination refers to the applicant’s proactive request to delay the substantive examination. This procedure can be flexibly combined with other processes, such as extending deadlines, filing divisional applications, or requesting restoration.

Applicable Conditions and Period:

The deferred examination request should be indicated simultaneously with the substantive examination request. However, the deferred examination request becomes effective from the date the substantive examination request. The deferred period can be one year, two years, or three years from the effective date of the deferred examination request.

In summary, CNIPA’s accelerated and deferred examination systems provide flexible options to meet diverse needs. Accelerated examination helps companies quickly secure protection in fast-moving fields, while deferred examination allows for strategic timing in uncertain or long-term technologies.