The State Intellectual Property Office has announced that China will prioritize patent examination in certain fields to improve licensing efficiency.
The new regulations for prioritized examination evidently will promote patent utilization and operation including licensing activities to some extent as it will result in earlier grant of some valuable patent applications, especially in the high-tech fields. “In recent years, SIPO pays much attention to patent utilization and operation, which yields the demand for expedited grant of patent applications. In this respect, the new regulations may be regarded as having an intention of improving license,” says Guangyu Zhang, a senior partner at Wanhuida Peksung in Beijing. “According to the authoritative interpretation of SIPO, release of the new measures or regulations mainly reflects SIPO’s effort to implement the requirements of the State Council for optimizing business environment and shortening examination and approval period in order to stimulate market vitality, though it is not specifically mentioned for the purpose of improving licensing.”
Based on the newly released data, patent licensing rate in China was 8.1% in 2016. “It is worthy of notice that the patent utilization and operation have been increasing steadily in recent years,” Zhang adds. “In 2016, the number of patent operations, including patent assignment, patent licensing and patent pledge increased 19.7% as compared with 2015. Especially the patent assignments became very active. The number of patents assigned in 2016 reached 146,053 with an increase of 25% as compared with 2015. Patent assignments, taking the proportion of 89.2% among all the patent operations, show its major role in this field.”
According to the set of regulations effective August 1, 2017, patent applications and reexaminations on energy saving, environmental protection, new-generation information technology, high-end equipment manufacturing, new energy, intelligent manufacturing and some other industries will gain benefit from the prioritization.
Patents that involve the internet, big data, cloud computing and in sectors with fast evolution in product or technology will also receive priority.
The new regulations in Article 3 stipulate the patent applications and reexamination cases for which prioritized examination may be requested. “In terms of technical fields, almost all high-technologies are listed. It is therefore believed that for the approval of prioritized examination, high-tech fields will play an important role. In addition to the high-tech fields, there are some other circumstances for prioritized examination without specific limitation to the technical fields,” says Xiaoling Duan, a senior partner at Wanhuida Peksung. “Such cases can be those involved in industries encouraged and supported by provincial and city level governments, those that are ready to be or are being exploited by the applicants, or those that can be proved being exploited by others, and those that are filed in China for the first time and then filed in other countries or regions with the same subject matters.”
Further, for patent invalidation cases, prioritized examination may be requested when the patent at issue is involved in infringement disputes, and the parties concerned have asked local IP offices for settlement, filed lawsuits before people’s courts or lodged arbitration or mediation requests before arbitration or mediation organizations, Duan adds. “Moreover, the regulations in both Article 3 and 4 stipulate that prioritized examination may be granted to the cases of great significance for the interest of the State or the public.”
“The regulations help form a more comprehensive system for prioritizing patent examinations,” said Song Jianhua, director of the treaty and law department of SIPO.
The old regulations for prioritized examination of invention patents took effect as of August 1, 2012, and they only provided prioritized examination for invention patent applications. The new regulations provide prioritized examination for all the patent examination matters handled by SIPO. That is, in addition to invention patent applications, utility model and design patent applications, reexamination cases and invalidation cases, may also obtain the approval of prioritized examination. The new regulations also detail the procedures for the operation of prioritized examination, Zhang says. “From this perspective, it is said that the new regulations help form a more comprehensive system for prioritizing patent examinations.”
It needs to be noted that patent applications under all kinds of Patent Prosecution Highway are regarded as a kind of prioritized examination, Zhang adds. “In other words, the new regulations shall not apply to the patent applications under the examination via the PPH route.”
In the situation that an application that is filed in China for the first time and then filed in other countries or regions with the same subject matters, the applicant may file prioritized examination without recommendation by the relevant departments of the State Council or the IP office at provincial level recommendation. In any other situations, the recommendation opinions with official seals by the aforesaid authorities are required for a request of prioritized examination under the regulations, Duan says. “Therefore, support of the government is the key for obtaining an approval of prioritized examination under the regulations. For foreign applicants or parties, they may instruct their agencies to obtain the recommendation of local intellectual office at provincial level in principle. Since the regulations have just become effective, it needs to proceed in practice to make sure how the foreign applicants or parties may best take advantage of the prioritized examination."
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