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Chinese Patent Prosecution Flow

During prosecution of a Chinese invention patent application (as distinct from a utility model application), the China National Intellectual Property Administration (CNIPA) will issue over 10 notices over the typical course of the prosecution process.  Most of these notices require responses with varying deadlines, which will be discussed further below.  

Depending on if the applicant filed in China via the Patent Cooperation Treaty (PCT) or Paris Convention , the applicant will either receive, respectively, 1A. Notification of entering the Chinese national phase of an international application or 1B. Notice of acceptance of patent application/Notice of Payment of Application Fees.  No response is due except in 1B if the applicant did not pay application fees at the time of filing, in which case the applicant has 2 months plus 15 days to pay the application fees from the date of the notice.  Applicants usually receive the 1A. Notice of entering the Chinese national phase with a few weeks of filing while the 1B. Notice of Acceptance usually arrives within a few days of filing.

The Applicant may then receive a 2. Notice of Formalities. This would usually be for a missing power of attorney or priority documents. The response deadline is 2 months plus 15 days from the date of the notice.

After the Applicant files a response to the 2. Notice of Formalities, if needed, CNIPA will send a 3. Notice of Passing Preliminary Examination of Invention Patent Application. No response to this Notice is due.

If the applicant has not requested substantive examination (e.g., at filing of the application), CNIPA will send a 4. Notice of Time Limit to Request Substantive Examination about 3 months before the deadline to request examination. The deadline to request examination is 3 years from the earliest priority date or 2 months from the filing date of a divisional application.  Note that when requesting examination, an Applicant can also request participation in the Patent Prosecution Highway program to accelerate examination.  Otherwise, the Applicant would need to wait for publication and 6. Notice of Entering Substantive Examination.  Further, the applicant can voluntarily amend the application only when filing the request for substantive examination or after receiving the 6. Notice of Entering Substantive Examination, as discussed below.  

Depending on priority claimed, the next notice may be the 5. Notice of Publication.  CNIPA publishes applications at about 18 months from the priority date. No response is needed. This notice may come together with the 6. Notice of Entering Substantive Examination if a request for examination was filed earlier. The 5. Notice of Publication will also likely come before the 4. Notice of Time Limit to Request Substantive Examination in a Paris Convention application.

About 6 months (or longer) after filing a Request for Substantive Examination, CNIPA will issue a 6. Notice of Entering Substantive Examination.  While there is no response required, the Applicant can voluntarily amend the claims at this stage as well as file a request to participate in the PPH assuming the application is published.  The deadline to voluntarily amend the claims is 3 months plus 15 days from the date of the Notice.

Like the U.S. Patent & Trademark Office, CNIPA will almost always issue a 7. first office action for lack of novelty, inventiveness, etc. It may also include a unity rejection. The time limit to reply is 4 months plus 15 days.

8. Subsequent office action have 2 months and 15 days to respond.

Assuming, all rejections are overcome, CNIPA will issue a 9. Notice to Grant giving the Applicant 2 months plus 15 days to pay the grant fees. The applicant will also have 2 months to file any divisional patent applications. CNIPA will issue the patent approximately 2 months after payment of the fees although a paper patent will not longer be issued.

CNIPA will issue 11. Annuity payment notices annually after grant with the deadline for payment being the anniversary of the application date.

Note that most CNIPA patent deadlines can be extended by 2 months with the payment of a fee.  Further, CNIPA allows the revival of patent applications in most cases as a matter of right without the need to show abandonment was unintentional – thereby, in effect, providing additional extensions of time for missed deadlines.  

Also note the above are the most common notices an Applicant can receive. It is possible to also receive a Final Rejection instead of Notice to Grant, which would require the Applicant to go through an appeal process similar to that at the USPTO.

 

 

 

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Author:
Director of China Intellectual Property Practice

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