Introduction of Guidance on Restoration of Priority, Addition or Correction of Priority Claims

On August 23, 2024, the China National Intellectual Property Administration (CNIPA) released the Guidance on Restoration of Priority, Addition or Correction of Priority Claims^[1] (called the “Guidance” hereinafter), which aims to guide applicants to accurately understand and utilize the system of restoration of priority right, addition or correction of priority claims when filing an application in China, a new mechanism introduced in the revised Implementing Regulations of the Patent Law of China. The Guidance provides specific explanations regarding system background, applicable conditions, handling procedures, and typical cases for illustrating various situations for utilizing the system. This article provides brief introduction of contents of the Guidance.

1. Restoration of Priority Right

1.1 Introduction to Restoration of Priority Right System

The revised Implementing Regulations of the Patent Law of China, which came into force on January 20, 2024, allow an applicant to restore their priority right within 2 months from the expiration of a priority period for an invention application or a utility model application according to Rules 36 and 128 of the Implementing Regulations.

1.2 Restoration of National Priority Right

According to Rule 36 of the Implementing Regulations, if a later application is filed after the expiration of 12 months from the filing date of the earlier application and before the Patent Office has prepared for publication, the applicant for an invention or utility model (excluding design) patent may, if a justifiable reason can be provided, request for restoration of the priority right within 2 months from the date of expiration of the period. A restoration request includes:

• Making a statement of priority claim at the time of filing of the application in the Application Request Form (Form No. 110101 for an invention application and Form No. 120101 for a utility model application);
• Submitting a Request for Restoration of Priority Right (Form No. 100051) within the prescribed time period (within 2 months from the expiration of a priority period);
• Paying fees for claiming priority right (80RMB per item of priority right) and for request for restoration of priority right (1000RMB) within the prescribed period;
• Submitting necessary documents such as a copy of the prior application document and a certificate of priority transfer (if any) within the prescribed period.

Furthermore, according to the Guidance, if the prescribed time period of within 2 months from the expiration of a priority period is missed, restoration of priority right cannot be made according to Rule 6 of the Implementing Regulations.

1.3 Restoration of Priority Right for PCT National Phase Application

For a PCT application entering into the Chinese national phase, the restoration of priority rights mainly involves the following two situations:

One, if a request for the restoration of priority rights has been approved during the international phase, the CNIPA will typically follow a Receiving Office’s decision in the international phase and an applicant does not need to submit request for restoration at the time of entry the application into the Chinese national phase.

Two, in instances where a request for the restoration of priority is not made during the international phase, or if such request is made but not approved, an applicant may request restoration with CNIPA within 2 months from entry into the national phase.

2. Addition or Correction of Priority Claims

2.1 Introduction to the System for Addition or Correction of Priority Claims

The revised Implementing Regulations allow an applicant to add or correct their priority rights within 4 months from the expiration of a priority period or within 16 months from the filing date of the earlier application, and before the Patent Office has prepared the application for publication, for an invention application or a utility model application according to Rule 37 of the Implementing Regulations of the Patent Law of China.

2.2 Conditions for Request of Addition or Correction of Priority Claims

The request for addition or correction of priority claims shall meet the following conditions at the same time:

• Claiming at least one priority at the time of filing of the application in the Application Request Form;
• Submitting a Request for Addition or Correction of Priority Claim (Form No. 100052) within the prescribed time period (within 4 months from the expiration of a priority period or within 16 months from the filing date of the earlier application);
• Paying fees for claiming priority right in case of addition of priority claims (80RMB per one item of priority right) within the prescribed period;
• Submitting necessary documents such as a copy of the prior application document and a certificate of priority transfer (if any) within the prescribed period.

Furthermore, according to the Guidance, if the prescribed time period of within 4 months from the expiration of a priority period or within 16 months from the filing date of the earlier application is missed, addition or correction of priority claims can be made according to Rule 6, clause 1 (“force majeure” such as typhoon, flood, earthquake, war, major outbreak and so on) of the Implementing Regulations.

3. Resolution of Disputes

When the applicant receives Notification of Decision on Request for Restoration of Right, or when an applicant receives the Notification that Request Deemed Not to Have Been Submitted, if the applicant is dissatisfied with the notification, the applicant may submit a request for administrative reconsideration with the CNIPA within 60 days from the date of receipt of the notice, or submit a lawsuit with the Beijing Intellectual Property Court within 6 months from the date of receipt of the notification.

4. Conclusion

Restoration of priority right, addition or correction of priority claims are new systems 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 resulting from filing an incorrect application.

[1] Full Chinese text of the Guidance is available at https://www.cnipa.gov.cn/module/download/down.jsp?i_ID=194339&colID=66.