On December 21, 2023, the Chinese National Intellectual Property Administration announced the revised "Implementing Regulations of the Patent Law of the People's Republic of China". One of the highlights of these regulations is the introduction of a remedy procedure for priority rights, including the restoration, addition, and correction of priority rights, aligning with the rules related to international applications under the Patent Cooperation Treaty (PCT).

1. Restoration of Priority Rights

Articles 36 and 128 of the Implementing Regulations respectively provide for the conditions for the restoration of priority rights for invention or utility model applications submitted through the Paris Convention route and applications entering the national phase in China through the PCT.

For invention or utility model applications submitted through the Paris Convention route, according to Article 36, “If the applicant misses the deadline specified in Article 29 of the Patent Law and has a valid reason for submitting an invention or utility model patent application on the same subject matter to the State Council's patent administrative department, they may request the restoration of priority rights within 2 months after the deadline.”

Regarding this provision, the Patent Examination Guidelines (2023) also stipulate that, “If the subsequent application is filed after the expiration of the 12-month priority period from the filing date of the prior application but before the patent office has prepared for publication, the applicant may request the restoration of priority rights within 2 months from the expiration of the deadline.”

According to this provision of the Implementing Regulations and the relevant stipulation of the Patent Examination Guidelines, for invention or utility model applications submitted through the Paris Convention route, the time conditions for the applicant to request the restoration of priority rights are: 1) within 2 months from the expiration of the 12-month priority period; 2) before the patent office has prepared for publication. Therefore, applicants requesting the restoration of priority rights under Article 36 of the Implementing Regulations need to strictly adhere to the relevant time requirements.

For applications entering the national phase in China through the PCT, according to Article 128 of the Implementing Regulations, “If the international application's filing date falls within 2 months after the expiration of the priority period, and the receiving office in the international phase has approved the restoration of priority rights, it is considered that the request for the restoration of priority rights has been made in accordance with Article 36 of Implementing Regulations; if the applicant does not request the restoration of priority rights in the international phase, or if the receiving office does not approve the request, the applicant may request the restoration of priority rights to the State Council's patent administrative department within 2 months from the entry date if there is a valid reason.”

From this provision of the Implementing Regulations, it can be seen that China, as a designated or elected office for PCT applications entering the national phase, no longer reserves the right for “priority rights restoration”. Specifically, for applications that have already restored priority rights in the international phase, there is no need to separately request the restoration of priority rights when entering the national phase in China; for applicants who have not requested the restoration of priority rights in the international phase or whose request has not been approved by the receiving office, applicants have the opportunity to request the restoration of priority rights when entering the national phase in China within 2 months from the entry date.

It is important to note that while the above provisions provide remedies for applicants to restore priority rights, it is still advisable for applicants and agents to closely monitor the priority deadline and try to submit patent applications within the 12-month priority period. If the 12-month priority period is missed, applicants should submit the patent application and restoration request within the restoration period and pay the corresponding fees to avoid missing the restoration deadline.

2. Addition and Correction of Priority Rights

According to Article 37 of the Implementing Regulations, “If the applicant for an invention or utility model patent application requests priority rights, they may request to add or correct the priority rights claim in the request within 16 months from the priority date or within 4 months from the filling date.”

Regarding this provision, the Patent Examination Guidelines (2023) also stipulate that, “If the applicant requests to add or correct the priority rights claim, they should request the priority rights at the time of filing the application and submit the request to add or correct the priority rights claim within the specified period, and if requesting to add priority rights, they should also pay the priority rights claim fee at the same time.”

According to this provision of the Implementing Regulations and the relevant stipulation of the Patent Examination Guidelines, as long as the applicant requests at least one priority right when submitting an invention or utility model application, they can request to correct or add the priority rights claim within 16 months from the priority date or within 4 months from the filling date. However, before this, the applicant needs to declare all requested priority rights when submitting the patent application, and no additional priority rights claim can be added after the patent application has been submitted. It is clear that the introduction of this provision is a significant benefit for applicants. However, it should be noted that according to the Implementing Regulations, the change from "no" to "yes" for priority rights claim is not acceptable.

In addition, applicants need to strictly adhere to the relevant time and fee requirements when requesting to add or correct priority rights claims under Article 37 of the Implementing Regulations.

3. Notes

- The provisions of Articles 36 and 37 of the Implementing Regulations cannot be used in combination. For example, if priority rights have already been restored in accordance with Article 36 of the Implementing Regulations, it is not possible to add or correct priority rights claim under Article 37.

- Articles 36/128, 37 cannot be applied simultaneously with Article 45 (incorporation by reference). That is, if the situation falls under the provisions of Articles 36/128, 37, then Article 45 does not apply, and vice versa.

The above provisions introduced by the Implementing Regulations provide remedies for applicants to extend the priority deadline, correct erroneous priority claims, or add priority claims. However, it is advisable for applicants and agents not to overly rely on these remedies but to closely monitor the priority deadline, try to submit patent applications within the 12-month priority period, and ensure that all correct priority rights are declared when submitting the patent application to avoid unnecessary negative consequences in the future. If it is necessary to restore, add, or correct priority rights, it is recommended to take action as soon as possible and pay the relevant fees promptly to avoid missing the required deadline.