Preliminary Examination Of Application For Patent for Invention (三)

3.Preliminary Examination of Two Types Of Special Patent Applications

3.1 Divisional Application

3.1.1 Submission of Divisional Application

  Where an application for a patent contains two or more inventions, the applicant may submit a divisional application at its/his own initiative.

  A divisional application shall be submitted before the expiration of two months for going through the formalities of registration from the date of receiving the notification issued by the Patent Office to grant the patent right for the initial patent application. No divisional application may be submitted after the expiration of the above-mentioned period of time when the patent application has been rejected and the rejection has taken in effect, or the patent application has been withdrawn or is deemed to have been withdrawn and the right has not been restored.

Where a patent application does not conform to the provisions of Art.31 of the Patent Law, the applicant shall, according to the requirements of Notification of Making Divisional Application or the Office Action, make amendments to the application so as to comply with the provisions of unity prescribed in the Patent Law and its Regulations. The applicant may submit another or more than one divisional application for the contents deleted from the initial application.

The divisional application cannot change the type of the initial application. For example, if the initial application is a patent application for invention, the divisional application concerned shall be a patent application for invention only. Also, the patent applicant of the divisional application shall not be changed. For example, the patent applicant of the divisional application shall be the same as that of the initial application. If not, the certified document of assignment shall be submitted. The inventor of the divisional application shall be the inventor, or part of the inventors of the initial application.

Where the applicant submits a divisional application, the filing number and the date of filing of the initial application shall be indicated in the Request and the complete application documents of the initial application shall be submitted. If various certified documents have been provided with the initial application, the duplicate copy may be used. Where the initial application is an international application, the applicant shall indicate the international application number in the brackets that follows the initial filing number. Where there is an international publication of the initial application in a language other than Chinese, a duplicate of the text of it shall be submitted together with a Chinese duplicate.

3.1.2 Preliminary Examination of Divisional Application

The examiner shall verify the following items on the initial application:

(1) Whether or not the initial date of filing indicated on the Request of the divisional application is correct;

(2) Whether or not the applicant of the divisional application is the same as that of the initial application. If not, whether or not the certified document about the lawful assignment of the right is attached.

Whether or not the inventor is the inventor or part of the inventors of the initial application.

(3) Whether or not the duplicate of the initial application documents is provided. Where the right of priority is claimed, whether or not the duplicate of the documents of priority right of the initial application is provided. Where the initial application is an international application, the divisional application shall not require the applicant to provide duplicate of the priority if it was not requested for the initial application.

(4) Whether or not the initial application is rejected and whether or not the rejection has taken effect; whether or not the initial application has been withdrawn, or deemed to have been withdrawn and the right has not been restored. Whether or not the date of submission of the divisional application is within two months from the date of receiving the notification to grant the right of patent for the initial application issued by the Patent Office.

Where one of the requirements indicated in item (1), (2) and (3) is not met, the applicant shall be invited to make rectification within a prescribed time limit. Where no rectification is made within the time limit, the examiner shall issue a decision that the divisional application is deemed to have been withdrawn, and the examiner shall notify the applicant accordingly. Where the date of submission of the divisional application is not within two months of registration, from the date of receiving the notification to grant the right of patent for the initial application by the Patent Office, or the initial application on which the divisional application is based has been withdrawn or is deemed to have been withdrawn and the right has not been restored, or, the initial application has been rejected and the rejection has taken effect, the examiner shall issue a notification that the divisional application is deemed to have not been filed.

The various legal time limits for the divisional application, such as the time limit for submitting the Request for examination as to substance, or the time limit for providing proof materials of the priority, etc, shall be counted starting from the initial date of filing. In the event that the applicant exceeds the time limits, the applicant may make up various formalities within two months from the date of submission of the divisional application. Where the applicant does not complete any formalities within the time limit, the examiner shall issue a decision that the divisional application is deemed to have been withdrawn and the examiner shall notify the applicant accordingly.

Fees for the divisional application shall be paid the same as those for a new application. The applicant may make up late payments within two months from the date of the submission of the divisional application. Where the applicant makes no payment, or makes a partial payment when the payment is due, the examiner shall make a decision that the divisional application is deemed to have been withdrawn and notify the applicant accordingly.

3.2 Application involving Biological Material

3.2.1 Submission of Application involving

Biological Material The applicant with an the application involving biological material shall, in addition to the other requirements provided in the Patent Law and its Regulations, complete the following procedures:

(1) deposit a sample of the biological material with an international depositary

institution designated by the State Intellectual Property Office before the date of filing, or, at the latest, on the date of filing (or the priority date where priority is claimed);

(2) indicate, on the Request and the description, the name and address of the depositary institution in which the sample of biological material was deposited, the date on which the sample of the biological material was deposited, the accession number of the deposit, and the scientific name of the biological material (with its Latin name);

(3) give, in the application documents, relevant information of the characteristics of the biological material sample;

(4) submit, within four months from the date of filing, a receipt of deposit and the viability proof from the depositary institution.

3.2.2 Preliminary Examination of Application involving Biological Material

Where the applicant submits a "receipt of deposit" within the prescribed time limit, the examiner shall examine and verify the following items according to the receipt:

(1) whether or not the depositary institution is the international depositary institution for the biological material sample recognized by the State Intellectual Property Office;

(2) whether or not the date of deposit is before/on the date of filing (or the priority date if the applicant claims priority);

(3) whether or not the items in the receipt of deposit are the same as those that appear in the Request.

Where the "receipt of deposit" does not meet the requirement in Item (1)or (2), the examiner shall issue a notification that the biological material sample is deemed not to have been deposited and notify the applicant accordingly. If the "receipt of deposit" does not meet the requirement in Item (3), the examiner shall invite the applicant to make rectification within the prescribed time limit. If the applicant does not make rectification within the time limit, the examiner shall issue a notification that the biological material sample is deemed not to have been deposited and notify the applicant accordingly.

Where applicant does not submit the "receipt of deposit" within the prescribed time limit, the examiner shall issue a notification that the biological material sample is deemed not to have been deposited and notify the applicant accordingly.

Where the applicant has neither submitted the viability proof of the biological material sample nor given appropriate ground for the non-submission within four months from the date of filing, the examiner shall issue a notification that the biological material sample is deemed not to have been deposited and notify the applicant accordingly.

An appropriate reason for not submitting viability proof is the depositary institution does not provide viability proof and the certified document thereof within four months.

Where the submitted biological material sample dies during the deposit, the examiner shall issue a notification that the biological material sample is deemed not to have been deposited and notify the applicant accordingly, unless the applicant provides evidence as proof that the applicant has no liability for the death of the biological material sample. Where the applicant provides such evidence, the applicant may make a new deposit of the biological material sample which is identical with the original one within four months. Under such circumstances, the examiner shall deem the initial date of deposit as the date of deposit.

Where the application for a patent relates to the deposit of the biological material, the applicant shall, in the Request and the description, indicate the scientific name of the biological material, the name and address of the depositary institution in which the sample of biological material has been deposited, the date on which the sample of the biological material was deposited and the accession number of the deposit. All of the information shall be consistent (see 7.3, Chapter 10, Part II of the Guidelines). Where, at the time of filing, they are not indicated or are not consistent, they shall be supplied within four months from the date of filing. If they are not supplied in four months, the sample of the biological material shall be deemed as not to have been deposited.

If the applicant has an appropriate reason and if the examiner issued a notification that the biological material sample is deemed as not to have been deposited, the applicant may start the procedures of restoration according to Rule 7.2 of he Regulations. The appropriate reasons for no deposit or the death of the biological material sample include but are not limited the following:

a. The depositary institution provides documents as evidence to indicate that it has not provided the certified document of deposit or viability proof within four months.

b. Where the biological material sample dies during the submission of the sample, the applicant provides the evidence to prove that the applicant has no liability for the death of the sample.

Where the procedures cannot be restored even if the procedure of restoration has been started or the applicant does not start the procedures of restoration after the Patent Office decides that the biological material sample is deemed not to have been deposited, the examiner shall, on his/her own initiative, delete the relevant items indicated in the Request and affix the seal.