IMPLEMENTATION PLAN FOR EXPEDITING EXAMINATION OF INVENTION PATENT

03/01/2009

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To shorten the examination time for invention patent applications, on 31 December 2008, the Intellectual Property Office (IPO) announced the Implementation Plan for Expediting Examination of Invention Patent Applications.  According to the announcement, as of 1 January 2009, where a corresponding foreign invention patent application is allowed by a foreign patent office , the applicant may request the IPO to consider the foreign decision so as to expedite the examination proceeding.  The Plan is intended to be in effect for one year and the IPO will decide whether to continue the Plan after further assessment. 

         

The major contents of the Plan are summarized as follows:
	Ÿ	Time to Seek Expedited Examination
		An applicant may apply for expedited examination (together with supporting patent allowance documents) only after the IPO issues a notice of commencement of the substantive examination or re-examination of the ROC invention patent application and only if a corresponding foreign patent application is allowed through substantive examination.
	Ÿ	Number of Applications Filed for the Same Invention Patent
		An applicant may, at the examination stage or the re-examination stagean invention patent application, apply for expedited examination on the basis of several foreign patent applications which have been allowed through substantive examination.  The applicant may also apply for expedited examination of the ROC invention patent application at both the examination stage and the re-examination stage on the basis of the same foreign application.  However, one foreign application can support one application for expedited examination at each examination stage.
	Ÿ	Allowed Claim Scope of a Foreign Patent Application
		Where the IPO has issued an office action asking an applicant to limit the scope of the patent claims and the patent applicant has complied, the applicant should avoid using the foreign patent application to apply for expedited examination if the claim scope of the foreign patent is broader than that of the ROC application after amendment.
	Ÿ	Documents Needed for Application
		The documents needed for an application for expedited examination are as follows:
		1.	The patent claims allowed and published by a foreign patent office (together with a Chinese translation, which can be prepared by Lee and Li) or a copy of notification of patent allowance and patent publication (together with a Chinese translation);
		2.	An explanation of the differences between the foreign patent claims allowed and the patent claims of the ROC application; and
		3.	Other documents which can facilitate patent examination, for example, Patent Search Report, a marked-up version showing the difference between the specification allowed for the foreign patent application and that filed for the ROC application, copies of office actions and the corresponding responses/amendments (including a summary Chinese translation).
	Ÿ	Examination Time
		In principle, the IPO will issue a notice of examination results (including examination opinion and decision) within six months of receipt of an application for expedited examination and all the required documents.  The actual examination time of each invention patent application will depend on the technical field involved.

According to Article 39 of the Patent Act, for an invention patent application filed on or after 26 October 2002, the IPO may, upon request, expedite the substantive examination of the application if a third party practices the invention covered by the patent application for commercial purposes after the patent application is laid open.  In the absence of certain statutory grounds under Article 39 of the Patent Act, the Plan provides applicants with a way to seek expedited examination. 

         

If any client decides to seek expedited examination of an invention patent application, please contact us so that we can assess the case and assist in the necessary filing.