Preliminary Examination Of Application For Patent for Invention

4.1 Claim to Foreign Right of Priority

4.1.1 Earlier Application and Latter

Priority-Claiming Application Where an applicant files a patent application and claims to foreign right of priority to the Patent Office, the examiner shall determine whether or not the earlier application, as the basis of the right of priority, was filed in a country which is a member State of the Paris Convention, or whether or not it is a regional application or an inter-national application which is effective in such a country. For the application claiming to the right of priority from a country which is not a member of the Paris Convention, examiner shall determine whether or not this country recognizes the right of priority of our country. It shall also be examined whether or not the applicant enjoys the right given by the Paris Convention, i.e. whether or not the applicant is a national or resident of a member State of the Paris Convention, or a national or resident of a country which recognizes the right of priority of China.

Furthermore, the examiner shall determine whether or not the later application is filed within twelve months from the date of filing of the earlier application. Where the requirement has not been met, the priority shall be deemed not to have been claimed. If there are two or more earlier applications, the time limit shall be counted from the date of filing of the earliest application. If the later application is filed after twelve months from the date of filing of the earliest application, the examiner shall issue a notification that the claim to the priority, which is based on an earlier application filed over twelve months, shall be deemed not to have been made.

During the preliminary examination, the examiner shall not examine that whether or not the earlier application is the first application defined by the Paris Convention and whether or not the substantial contents of the subject matters of the earlier application and later application are identical, unless the earlier application is obviously not in conformity with the relevant requirements of the Paris Convention or the subject matters of the earlier application and the later application are obviously different. The earlier application may be an application for inventor's certificate defined in Art.4-A of the Paris Convention.

4.1.2 Declaration to Claim to Right of Priority

To claim to the right of priority, the applicant shall make a written declaration to claim to priority in the Request when the patent application is filed. If the applicant fails to do so, the claim to the priority shall be deemed not to have been made.

The date of filing and the filing number of the earlier application, which is the basis of claiming to the priority, as well as the name of the country or the inter-governmental organization, which accepted that earlier application, shall be indicated in the declaration of claiming to the right of priority. If the applicant fails to indicate or incorrectly indicates the said date of filing and the name of the country or inter-governmental organization which accepted the earlier application in the written declaration, the declaration shall be deemed not to have been made, and the claim to the priority shall be deemed not to have been made on the basis that no written declaration has been made.

Where multi-rights of priority are claimed but the dates of filing of some earlier applications and the names of the countries or inter-governmental organizations that accepted some earlier applications have not been indicated in the written declaration, the claim to the corresponding right of priority shall be deemed not to have been made. Where no filing number or incorrect filing number of the earlier application is indicated in the said declaration but the applicant has provided a duplicate of the documents of the earlier application within the prescribed time limit, the examiner shall issue a notification of rectification. Where no response has been made within the time limit or the rectification does not meet the relevant requirements, the claim to the right of priority shall be deemed not to have been made.

4.1.3 Duplicate Documents of Earlier Application

The duplicate documents of the earlier application shall be issued by the country or the inter-governmental organization that accepted the earlier application which is the basis of the right of priority. The form of the said duplicate documents shall conform to the international practice. At least the name of the country or inter- governmental organization that accepted the earlier application, applicant, date of filing and filing number shall be provided. Where the said duplicate documents fail to do so, a notification for rectification shall be made. Where no response has been made within the time limit or the rectification does not meet the relevant requirements, it shall be deemed no duplicate documents of earlier application have been submitted and the examiner shall issue a notification that the claim to the right of priority is deemed not to have been made based on this. Where the claim to multi-rights of priority is made, the duplicate documents of all the earlier applications shall be provided. Where the requirements remain unmet, it shall be deemed no duplicate documents of earlier application have been provided and the examiner shall issue a notification that the claim to the priority based on the earlier application is deemed not to have been made based on this.

Duplicate documents of the earlier application shall be submitted within three months from the date of filing of the later application. The claim to the right of priority shall be deemed not to have been made if such documents have not been submitted within the time limit.

Where the above-mentioned duplicate documents have been submitted to the Patent Office previously, there is still a requirement to submit them. The duplicate copy may be accepted provided that the filing number of the application, which is included in the duplicate documents of the earlier application, is indicated.

4.1.4 Applicant of Later Application

The applicant of the later priority-claiming application shall be the same as the applicant recorded in the duplicate documents of the earlier application or one of the applicants of the earlier application.

Where the applicants are completely different, i.e., the right of priority of the earlier application has been assigned to the applicant of the later application, a document certifying the assignment of the right of priority, which shall be signed or sealed by the entire group of applicants of the earlier application before the date of filing of the later application, shall be submitted at the time, or the latest within three months, of submitting the later application. Where the earlier application has more than one applicant and the later application has at least one different applicant, a document certifying the common assignment of the right of priority, which has been signed or sealed by the entire group of applicants of the earlier application, to the entire group of applicants of the later application before the date of filing of the later application; or a document certifying the assignment of the right of priority, which has been signed or sealed by several applicants of the earlier application, to several applicants of the later application respectively before the date of filing of the later application, shall be provided.

Generally, the above-mentioned document shall be signed before the sub-mission of the later application unless there is other provision in the certified document. Where the applicant fails to submit such a certified document or the document submitted fails to meet the requirements, the examiner shall issue a notification of the claim to the priority to be deemed not to have been made.

4.1.5 Withdrawal of Claim to Right of Priority

The applicant may withdraw his/its claim after the claim to the right of priority has been made. Where the claim to multi-rights of priority has been made, the applicant may withdraw one, some or all of them.

Where the applicant request's to withdraw the claim to the right of priority, the request shall be made in written form.

Where the earliest date of priority of a patent application has been changed because of the above-mentioned withdrawal, if the various time limits counting from this date of priority have not passed, these time limits shall be counted from the earliest date of priority or the date of filing after the change. Where the request for withdrawal of the claim to the priority reached the Patent Office after fifteen months from the initial earliest date of priority, the time of publication of the later patent application shall be counted from the initial earliest date of priority.

After the claim to the right of priority has been made, the relevant requirements and measures shall be untenable.

4.1.6 Fee of Claim to Right of Priority

Where the right of priority is claimed, the corresponding fees shall be paid at the same time that the filing fee is paid. If the fees have not been paid or not been paid in full within the time limit, the claim to the priority shall be deemed not to have been made.

Withdrawing the claim to the priority, the corresponding payments for fees of claim to the right of priority which have been paid shall not be returned.

4.2 Claim to Domestic Right of Priority

The claim to domestic right of priority refers to the situation where the applicant submits a later application to the Patent Office on the same subject matter within twelve months from the date of filing of the first patent application for invention or for utility model in China, and claims to the right of priority. The claimant to the domestic right of priority can be eighth a Chinese or a foreigner.

4.2.1 Earlier Application and Later Priority-claiming Application

The earlier application and later priority-claiming application shall comply with the following provisions:

(1) The earlier application shall be a patent application for invention or utility model rather than a patent application for design or a divisional application.

(2) No foreign or domestic right of priority has been claimed for the subject matter of the earlier application.

(3) No patent right has been granted for the subject matter of the earlier application, i.e., no notification to grant a patent right for the subject matter of the earlier application has been made.

(4) The later priority-claiming application has been submitted within twelvemonths from the filing date of the earlier application.

When examining the above Item (3), the reference time shall be the date of filing of the later priority-claiming application, i.e., the Patent Office has not issued the notification to grant the patent right for the subject matter of the earlier application on that date. When examining the above Item (4), where multi-rights of priority are claimed, the reference time shall be the date of filing of the earliest application, i.e., the later priority-claiming application has been submitted within twelve months from the date of filing of the earliest application.

Where one of the above requirements remains unmet, the examiner shall issue a notification that the claim to the priority is deemed not to have been made.

When examining the right of priority, where it is found the notification to grant the patent right has been made by the Patent Office but the date of issuance of the notification is after the date of filing of the later application, under such circumstances, if the claim of priority conforms to the requirements, the applicant shall be invited to return the said notification as soon as possible. When the Patent Office receives the returned notification, the relevant fees which have been paid by the applicant shall be returned.

During the preliminary examination, the examiner shall only examine whether or not the subject matter of the later application is obviously different from that of the earlier application. The examiner shall not examine whether or not the substantial contents of subject matters of the earlier application and the later application are consistent. Where the subject matters of the two applications are obviously different, the examiner shall issue a notification that the claim to priority is deemed not to have been made.

4.2.2 Declaration to Claim to Right of Priority

Any applicant who claims the to right of priority shall make a declaration in the Request when the application is filed. If the applicant fails to do so, the claim to the right of priority shall be deemed not to have been made. The applicant shall include in the declaration to claim to the right of priority the date of filing, the filing number of the earlier application which is the basis of the claim to the priority, as well as the name of the country which received the application (China). If the applicant fails to indicate or incorrectly indicates one of the above items, the declaration shall be deemed not to have been made, and the claim to the priority shall be deemed not to have been made based on the facts that no written declaration has been made. Where multi-rights of priority have been claimed but the matters of some of the earlier applications have not been indicated or have been incorrectly indicated in the written declaration, the corresponding claim to the priority shall be deemed not to have been made.

4.2.3 Duplicate Documents of Earlier Application

The duplicate documents of the earlier application shall be prepared by the Patent Office according to the relevant provisions, and included in the file of the later application, provided that the prescribed fee to claim to the priority has been paid.

4.2.4 Applicant of Later Application

The applicant of the later priority-claiming application shall be the one appearing in the duplicate documents of the earlier application. Where the applicants are not the same, the applicant of the later application shall submit a document certifying to the assignment of the right of priority when the later application is filed. Where there is difficulty doing so, the said document shall be submitted within three months from the date of filing of the later application together with the reason of the delayed submission. This document shall be signed by all of applicants of the earlier application and the document shall be signed before the submission of the later application unless otherwise provided other provision in the certified document. Where the applicant fails to submit such a document or the applicant submits a certified document that fails to meet the requirements, the examiner shall issue a notification that the claim to the priority is deemed not to have been made and notify the applicant accordingly.

4.2.5 Withdrawal of Claim to Right of Priority

The examination shall be performed according to the provisions in Section 3.2.1.5 of this Chapter. However, the earlier application which has been deemed to have been withdrawn shall not be requested to be restored due to the withdrawal of the claim to the priority.

4.2.6 Fee of Claim to Right of Priority

Examination shall be performed according to the provisions in Section 3.2.1.6 of this Chapter.

4.2.7 Procedures of Making Earlier Application to Be Deemed to Have Been

Withdrawn Where the domestic right of priority is claimed, the earlier application shall be deemed to be withdrawn from the date on which the later application is filed.

Where the applicant claims to the domestic right of priority, and the requirements have been satisfied after the preliminary examination, the examiner shall issue a notification that the earlier application is deemed to have been withdrawn and notify the applicant accordingly. Where rights of priority of two or more applications are claimed, if the requirements have been satisfied after the preliminary examination, the examiner shall issue a notification that the corresponding earlier applications are deemed to have been withdrawn and notify the applicant accordingly.

The application which is deemed to have been withdrawn cannot be requested to be restored.