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Briefly discuss the application strategy of delayed examination of invention patent application

Release Time：

2022-06-30

Author: Zhu Haitao

It's for the purpose of conveying more information

The views expressed here are those of the author and do not represent a credible position

Abstract

This paper briefly introduces the delayed examination system of our country, and discusses the application strategy of delayed examination of invention patent applications in practice from the perspective of applicants and agents.

First. Introduction to the patent delayed examination system

On June 5, 2020, the State Intellectual Property Office (hereinafter referred to as the State Knowledge Office) issued the "Announcement on the Amendment of the Guidelines for Patent Examination (No. 328)" [1], announcing the addition of Section 8 to the seventh chapter of the fifth part of the Guidelines for Patent Examination, in which the relevant provisions on delayed examination are as follows:

8.3 Deferred Review

The applicant may file a request for delayed examination of an application for a patent for invention or design. The request for delayed examination of an invention patent shall be filed by the applicant at the same time as the request for substantive examination, provided that the request for delayed examination of an invention patent application shall become effective as of the date on which the request for substantive examination becomes effective. The request for delayed examination of the design shall be made by the applicant at the same time as the submission of the design application. The delay period is one, two or three years from the effective date of the request for delay review. Upon expiration of the delay period, the application will be considered sequentially. When necessary, the Patent Office may initiate examination proceedings on its own and notify the applicant that the period of delay requested by the applicant for examination is terminated.

In this regard, the revised interpretation given by the National Knowledge Bureau is as follows:

Providing applicants with more options for examination modes can better coordinate and match the examination cycle with the market-oriented operation of patents, and meet the diversified needs of innovation subjects. Specifically, some areas of invention technology hope to obtain more time to consider adjusting the layout of patent claims and the scope of protection by delaying examination. For some products with a long research and development cycle, the time of publication of design patents is often earlier than the time of listing of the design products. Due to the characteristics of "what you see is what you get" of the design, it is easy to be copied. If the design right holder is not fully prepared for commercial application, the design is disclosed. The business interests of the right holder may be damaged. Therefore, the revised Guidelines introduce a delayed examination system for patent applications for inventions and designs. The delayed review of utility model patent applications due to the public feedback there is a greater risk of "submarine" patent, so the amendment does not introduce a delayed review system. [2]

On February 5, 2022, with the approval of The State Council, China joined the Hague Agreement on the International Registration of Industrial Designs (hereinafter referred to as the Hague Agreement), which came into force in China on May 5, 2022. A deferred review system was included in the Hague Agreement, and previous additions to the deferred review system by OIS cleared the way for accession to the Hague Agreement.

From the perspective of patent applicants, delayed examination has many advantages, such as enriching the applicant's application and layout strategy, improving patent quality, occupying a competitive advantage, facilitating the fight against infringement through the "submarine" patent of design, and improving the quality of examination, etc. Separately, delayed examination naturally has some disadvantages, such as shortening the effective time of patent protection, increasing the risk of market competition, affecting the timeliness of inventor awards, and so on. Regarding the advantages and disadvantages of delayed examination, both the applicant and the agent have a consensus, and this article will not discuss it.

Second. The characteristics of delayed examination of invention patents

The following is a specific explanation of the delayed examination of invention patent applications:

1) When submitting the request for substantive examination at the same time, you can directly check the time limit for requesting delayed examination in the 4th column of the request for substantive examination, as shown in the figure below:

2) Deferred review extends the waiting time to be reviewed after entering the substantive review stage, rather than extending the period for filing a substantive review request (the period for filing a substantive review request is still three years from the earliest priority date);

3) Even if a delay of review is requested, the notice of entering the substantive review stage will be issued shortly after the submission of the substantive review request and the payment of the substantive review request fee, and the deadline for submitting voluntary amendments within 3 months after entering the substantive review stage will not be delayed;

4) The request for delay of review is irrevocable;

5) The National Information Office reserves the right to terminate the delay period and initiate the review process on its own.

For invention patent applications, the delayed examination system allows the applicant to actively extend the period of actual examination proceedings to a maximum of six years. At present, there is no similar provision in the patent system of all countries in the world. Japanese patent law directly sets the time limit for requesting examination at seven years. [3] Although the European Patent Convention provides for an extension of the time period for filing a request for examination [4], this decision is made by the Administrative Board, not by the applicant. It can be seen that the delayed examination system of invention patent application is a new system unique to China, so it is not set up too complicated in the early stage of operation, and there is no withdrawal procedure, announcement procedure and special public objection procedure.

Third. The application strategy of delayed examination of invention patents

The following is a discussion of the application strategy of delayed examination for invention patent applications from the perspective of the applicant and the agent.

Usually, the applicant wants to be protected as early as possible after filing an invention patent application, but sometimes for technical, market, production, capital, competition, patent layout, arguing strategy, etc., at the same time, it wants to obtain authorization as late as possible, and retain the opportunity to file a new subcase application in the longest possible time frame. As the interpretation given by the State Knowledge Bureau, applicants need more options for examination models, so that the examination cycle can better coordinate and match with the market-oriented operation of patents, and meet the diversified needs of innovation subjects.

Before the introduction of the delayed examination system, it was difficult to balance the contradictory demands of early protection and late authorization of invention patent applications, and the applicant usually took the initiative to give up this contradictory idea and choose one or the other, so the instructions received by the agent were usually either to seek authorization as soon as possible or to seek to delay authorization. Although some product inventions can alleviate this contradiction to some extent by filing same-day applications, it is still difficult to predict the grant time of invention patent applications, and the same-day filing strategy is not suitable for method inventions.

After the introduction of the delayed review system, the above contradictions can be well solved through rational use of the provisions of the delayed review system in practice, and the specific strategies are described as follows.

Strategy 1

For product inventions that do not involve methods, the strategy of "same day application + late presentation review + delayed review" can be adopted. In this way, protection can be obtained as early as possible through the advantage of the short authorization cycle of utility model applications, and the authorization time can be delayed by submitting the invention application as late as possible and requesting delayed review. However, due to the reason that the utility model application protects the object, this strategy does not apply to the application containing the method invention.

Strategy 2

For patent applications that do not need or cannot be protected as soon as possible by applying for utility models on the same day, the strategy of "subdivision case + late submission of parent case + delayed review" can be adopted. Specifically, when the invention patent application is submitted, it is not submitted to the actual trial request, and after receiving the acceptance notice, it is immediately submitted as a mother case application and a sub-case application, and at the same time, it is submitted to the advance disclosure and actual trial request for the sub-case application. Where the requirement for priority review is met, a priority review request may also be made after the subcase application has entered the substantive review stage, so that the subcase application can be authorized as soon as possible and thus protected as soon as possible. On the other hand, parent applications are submitted as late as possible and request deferred review, thus delaying the time of authorization as much as possible.

In certain situations, the above two strategies can also be used in combination to achieve the desired effect. For example, in the case of an invention patent application containing both product invention and method invention, the patent application does not meet the requirement of priority examination, but the applicant hopes to obtain protection for the patented technology as soon as possible. In this regard, the utility model can be applied for the product invention on the same day, in order to obtain protection as soon as possible; Then, based on the invention application on the same day, a sub-case application is made for the method invention, and at the same time, a request for disclosure and verification in advance is put forward, so that the sub-case application can be authorized as soon as possible, so that the method invention can be protected as soon as possible. The original parent invention application is still submitted as late as possible and requests delayed review, thus delaying the authorization time as much as possible. The two foundational strategies can be flexibly combined according to review practices and individual needs, depending on the specific circumstances of each application.

It can be seen that in practice, combining the delayed examination system with the same-day application and/or the sub-case system by using the above strategies can fully meet the needs of early protection and late authorization of invention patent applications at the same time, successfully resolve the contradiction, and retain the opportunity to file a new sub-case application within the maximum time range.

Obviously, the introduction of the delayed examination system and its reasonable use in practice will have a certain impact on the applicant's patent application and layout strategy, and it is of great significance. Patent agencies should provide relevant information and publicity to applicants and/or clients in a timely manner in order to provide more valuable services.

It is worth noting that the OIC retains the power to terminate the delay period and initiate the review process on its own. The delayed examination system is currently only included as an option in the Patent Examination Guide and is not written into law. Therefore, it is also necessary to remind applicants of policy risks and not to rely too much on them.

reference

[1]https://www.cnipa.gov.cn/art/2020/6/5/art_1567_93048.html

[2]https://www.cnipa.gov.cn/art/2019/10/30/art_66_11489.html

[3] Article 48 of the Japanese Patent Law

[4] Article 95 of the European Patent Convention

Source: Trade promotion specialist

Author: Zhu Haitao

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