Deferred examination for Chinese patents
date: 2020-02-13 James Chen Read by:

    Chinese patent applications can also be requested for deferred examination.

    Specifically, an applicant may file a request for deferred examination for an invention and design patent application. The delay period is one year, two years, or three years, which is requested by the applicant at the same time as the substantive examination request for an invention patent or as the filing of a design patent application. This new change has been implemented with the amendments to the Patent Examination Guideline that came into effect on November 1, 2019.

    The delay request does not require official fees, applies to Chinese invention patent applications and design patent applications including divisional applications, and there is no restriction on the applicant's nationality.

    It should be noted that, for an invention patent application, the request for deferred examination does not affect the publication of the invention patent application, which is still carried out in 18 months from the patent application date or the earliest priority date; moreover, the request for deferred examination will not affect the opportunity for voluntary amendment to the patent application.

    In addition, as a new system, the deferred examination request system should not be set too complicated, so there are no withdrawal procedures, publication procedures and public opposition procedures. In other words, once a request for deferred examination is filed and becomes effective, there is no way for the applicant to change their minds, and the patent application will not enter the examination process after waiting for the requested period.

    Prior to the revision of the Patent Examination Guidelines, in Chinese patent application filing and prosecution practice, there have been accelerated examination procedures such as PPH and Prioritized Examination, but there has been no special mechanism to delay examination. If the applicant wants to delay the examination and grant of the patent application, they can only extend the period as long as possible by actively making defects in the formalities and delaying the response. However, these operations increase the difficulty in actual operation and the burden on the applicant, and there is a risk of losing rights or affecting the scope of protection.  The special deferred examination request process is highly convenient for applicants with this need.

    Applicants can flexibly apply this new system according to their own patent application filing and layout strategies, product characteristics, etc. As for the disadvantages brought by the deferred examination, such as shortening the duration of patent protection, it is also a factor that needs to be considered comprehensively.