Introduction of Guidance on Incorporation by Reference to Patent Applications for Invention or Utility Model

On December 24, 2024, the China National Intellectual Property Administration (CNIPA) released the Guidance on Application of Incorporation by Reference to Patent Applications for Invention or Utility Model^[1] (called the “Guidance” hereinafter), which aims to guide applicants to accurately understand and utilize the system of incorporation by reference to patent applications for invention or utility model when missing or wrongly submitting claims, specification or part of claims and specification upon filing an application in China, a new mechanism introduced in the revised Implementing Regulations of the Patent Law of China. This article provides a brief introduction to the contents of the Guidance.

1. Introduction to Incorporation by Reference

The revised Implementing Regulations of the Patent Law of China, which came into force on January 20, 2024, allow an applicant to resubmit the claims, specification or part of claims and specification of an invention application or a utility model application that were missed or wrongly submitted on the filing date, within two months from the filing date or within the time period prescribed by the CNIPA, according to Rule 45 of the Implementing Regulations.

2.  Incorporation by Reference for National Application

2.1 General Requirements for Incorporation by Reference

(1) Making a statement of claiming the priority and requesting for incorporation by reference at the time of filing the application in the Application Request Form (Form No. 110101 for an invention application and Form No. 120101 for a utility model application, which contain default statement of requesting for incorporation by reference);

(2) Submitting a declaration of confirmation of incorporation by reference (Form No. 100055) and relevant documents such as the application documents incorporated by referring to the prior application document, as well as a copy of the prior application document and certificate of priority transfer (if any) within two months from the filing date or within the time period prescribed by the CNIPA;

(3) Paying additional fees for application (if any) within two months from the filing date or within one month from the date of receiving the “Notice to Pay Additional Fees.”

2.2 Limitation on using of Incorporation by Reference as a Rescue Measure

The Guidance clarifies that, incorporation by reference is not applicable to a divisional application; if the prescribed period or 2 months from the filing date is missed, the right for incorporation by reference cannot be restored according to Rule 6.2 of the Implementing Regulations; and the priority used for incorporation by reference cannot be a priority restored according Rule 36 of the Implementing Regulations or a priority claim added or corrected according to Rule 37 of the Implementing Regulations.

2.3 Main Types of Incorporation by Reference

Invention or utility model patent applications that can be subject to the Incorporation by Reference system can be divided into the following four types:

(1) Missing claims and/or specification (missing an item)

(2) Wrongly submitted claims and/or specification (wrongly submitted an item)

(3) Missing a part of claims and/or specification (missing a part)

(4) Wrongly submitted a part of claims and/or specification (wrongly submitted a part)

For an invention application, the drawings are considered as a “part” of the specification, and for a utility application, the drawings as a whole are considered as an “item” because containing drawings is a necessary item for the acceptance of a utility model application.

2.4 Requirements for Submission of Declaration of Incorporation by Reference and Relevant Documents

When submitting a declaration of confirmation of incorporation by reference and relevant documents, the applicant should pay attention to the following requirements.

1. The application number of the prior application stated in the declaration of confirmation of incorporation by reference shall be consistent with the application number of the prior application filled in the request upon filing the application, and the position where the contents of the resubmitted application document are in the copy of the prior application documents (if the copy is in a foreign language, it refers to its Chinese translation) should be stated.
2. The contents of the resubmitted application document shall be included in the copies of the prior application document and their Chinese translation.

III. Where foreign priority is claimed in the request, a copy of the prior application document issued by the original receiving institution should be submitted, together with a Chinese translation of the copy; where the domestic priority is claimed, the number and date of the prior application should be indicated.

1. The priority used for the Incorporation by Reference should be a legally claimed priority according to relevant regulations under the Patent Law, the Implementing Regulations and the Patent Examination Guidelines, and should be within the limitation on using Incorporation by Reference as a Rescue Measure.

3. Incorporation by reference for PCT National Phase Application

For a PCT application entering into the Chinese national phase in which there is an item or a part incorporated by reference in the international phase, the applicant shall, when going through the formalities for entering the national phase, submit the Chinese translation of the copies of the prior application document related to the incorporation by reference, and correctly indicate in the entry statement the position where the item or part incorporated by reference are in the Chinese translation of the original application document (or the original application document submitted in Chinese) and the Chinese translation of the copies of the prior application document (or the prior application document submitted in Chinese).

4.  Resolution of Disputes

When the applicant receives the final notification during the request of incorporation by reference to patent applications for invention or utility model, such as Notification of Redetermination of Filing Date, Notification that Claim to Priority Deemed Not to Have Been Made and so on, if he is dissatisfied with the notification, he may submit a request for administrative reconsideration with the CNIPA within 60 days from the date of receipt of the notification, or submit a lawsuit with the Beijing Intellectual Property Court within 6 months from the date of receipt of the notification.

5. Conclusion

Incorporation by reference to patent applications for invention or utility model is a new system added in the revised Implementing Regulations of the Patent Law of China. Applicants should carefully check the applicable circumstances before applying the corresponding system to avoid loss of rights due to incorrect application.

[1] Full Chinese text of the Guidance is available at

https://www.cnipa.gov.cn/art/2024/12/24/art_66_196843.html.