Guidelines on priority restoration, increase or correction of priority requirements

Revised the implementing rules for the patent law of the People's Republic of China (hereinafter referred to as detailed rules) new priority recovery, priority requirements increase or correction system, supporting modification of the patent examination guide (hereinafter referred to as the guide) to the above system also made further detailed provisions, relevant provisions have been implemented on January 20,2024. The new system provides applicants with more effective relief regarding the priority period and procedures, and connects with the international application rules of the Patent Cooperation Treaty (hereinafter referred to as PCT). This guide aims to introduce the system background, applicable conditions, process, typical cases and other specific content, guide the innovation subject accurately understand and use the priority recovery, the increase or correct system, help the applicant improve the quality of patent application procedures, promote the development of patent enterprise high quality.

1. The priority restoration system
(1) Introduction of the priority restoration system

In accordance with Article 29 of the Patent Law, the applicant may enjoy the right of priority within 12 months from the date of the first application for a patent for an invention or utility model. Where an applicant applies for a patent for invention or utility model on the same subject beyond the 12-month time limit, he may, in accordance with the provisions of Article 36 of the Detailed Rules, request the restoration of priority within 2 months from the date of expiration of the time limit. Article 128 of the detailed rules is the supporting clause of Article 36. If the application date of the international application has approved the restoration of priority at the bureau of the international stage within 2 months after the expiration of the priority period and the applicant has valid reasons, the applicant may request the restoration of priority within 2 months from the date of entry.

This system gives the applicant more opportunities for deadline relief, and with the corresponding priority recovery clause in the PCT implementation rules, this system also smoothly connects the relevant processing rules of the PCT application international stage and the national stage, and better protects the interests of the applicant.

(2) the restoration of the priority applied for by the state

According to the provisions of article 36 of the detailed rules, after the application is in 12 months after the expiration of the deadline, before the patent office to prepare, have good reasons, invention or utility model (excluding design) the patent applicant may within 2 months from the date of expiration of the request to restore priority.

1. The request for restoration of priority shall also meet the following conditions

(1) A statement of priority upon application

Article 36 of the applicable rules, after the application shall be in the application of the claim, that is, in the "priority claim" in the patent request (form no. 110101 or 120101), the priority information of the same), including the name of the original acceptance institution, application date and application number of the first application.

[Case 1]

The applicant filed an application for a patent for invention to the Patent Office on March 25,2024, without filing a declaration of priority in the written request. The Request for Restoration of Priority was filed on March 26,2024, requesting restoration of priority A (prior application date: March 20,2023). Since the applicant did not fill in the information of priority A in the invention patent request when submitting the patent application, that is, did not make the claim of priority, he cannot request the restoration of the priority A.

[Case 2]

The applicant filed an application for invention patent to the Patent Office on March 25,2024, and filed in the written request the claim of priority A (the first application date is March 30,2023). The Request for Restoration of Priority was filed on March 26,2024, requesting restoration of priority B (prior application date: March 20,2023). Although the applicant filled in the priority information when filing the patent application, he filled in the information of priority A, rather than the information of the requested priority B, so he cannot request the restoration of priority B. If the applicant requests the restoration of the priority, he shall specify the information of the request to meet the request for a declaration of the priority at the time of the application.

(2) Make a request for the restoration of priority within the prescribed time limit

The applicant shall, within 2 months from the date of 12 months of the prior application and before the Patent Office shall prepare the application for the restoration of priority (form No.100051), rather than the restoration of the application under Article 6 of the Detailed Rules. The applicant should fill in the information in the Request for Priority.among:

In the first column, the application number, the name of the invention and creation, and the description project information of the applicant shall be accurate;

The second column, if after the application for ordinary countries, please check "according to the provisions of article 36 of the implementing rules of the patent law, request to restore priority", if after the application for the PCT international application, need to check "the application for the PCT international application, according to the provisions of the detailed rules of the patent law, request to restore priority";

In the third column, the reasons for requesting the restoration of priority shall be briefly filled in, and the reasons for requesting the restoration of priority shall be justifiable reasons, including non-subjective and intentional reasons;

In the fourth and fifth columns, the name of the original accepting institution, the first application date and the first application number of the first application shall be filled in accurately. The priority information requesting the restoration shall be consistent with the corresponding priority information in the patent request. Please note: here must be filled in completely and accurately, otherwise the priority will not be restored in time.

[Case 3]

An invention patent application of the first application date for February 1,2023, the applicant after February 2,2024, before April 1,2024 before the application, and in the invention patent claim, before the patent office preparation for priority, the applicant between February 2,2024 to April 1,2024 request to restore priority. If such circumstances meet the requirements of Article 36 of the Detailed Rules, the restoration of the priority may be requested.

[Case 4]

The applicant filed an application for a patent for invention on January 25,2024, and in the request filed four declaration of priority, and submitted the Request for the Restoration of priority, requesting the restoration of priority. In the case, the filing date of the later application and restoration of priority request is January 25,2024, and the prior application date on which the applicant may request the restoration of priority shall be between November 25,2022 and January 24,2023. The first priority does not conform to the specified period and cannot be restored; the last three priority conforming to the prescribed time limit can be restored. According to the relevant provisions of the Guidelines, the delay request for the restoration of overdue priority (12 months more than Article 36 of the Detailed Rules beyond the date of the first patent application) cannot be resumed in accordance with Article 6 of the Detailed Rules. Since the restoration of the overdue priority has given the applicant the relief procedure for delaying the time limit stipulated in Article 29 of the Patent Law, paragraph 1 and paragraph 2 of Article 6 of the Detailed Rules do not apply to the time limit stipulated in Article 36 of the Detailed Rules for delay.

[Case 5]

The applicant filed an application for a patent for invention on July 15,2024, filed a declaration of priority in the written request (the first application date is May 1,2023), and requested the restoration of priority in accordance with Article 36 of the Detailed Rules. The Patent Office issued the Notice of Examination and Approval of the Request for Restoration of Rights, which pointed out that the priority will not be restored because the request for restoration of rights is made after the expiration of the prescribed time limit. The applicant subsequently submitted the Request for Restoration of rights on July 30,2024, requesting the restoration of the delay under Article 6 of the Detailed Rules.

In the case, the applicant should request the reinstatement of the priority right within 2 months from the expiration date of the 12-month period from May 1,2023, that is, before July 1,2024. If the applicant files an application for invention patent on July 15,2024 and requests the restoration of the right of priority, the priority shall not be restored. In such a case, the applicant can no longer request the restoration of the priority restoration period of the delay under the "cause of force majeure" or "other justifiable reasons" in paragraph 1 of Article 6 of the "Detailed Rules".

(3) Pay the fee within the prescribed time limit

The applicant shall pay the priority claim fee (80 yuan / item) and the claim fee for restoration (1000 yuan) within 2 months from the expiration date of 12 months from the application date of the first application.

[Case 6]

The applicant filed an application for a patent for invention on April 1,2024, and filed a declaration of priority in the written request (the first application date is February 1,2023), and submitted the Request for Restoration of priority, but the restoration claim fee is not paid.

In the case, the applicant's request for priority Restoration is within 2 months from the expiration date of the 12 months period from February 1,2023, in line with the prescribed time limit. However, the failure to pay the recovery claim fee within the prescribed time limit does not conform to the provisions. In order to give the applicant the opportunity for relief, in the absence of other defects, the Patent Office will issue the Notice of Correction for the recovery of the right, requiring the applicant to pay the recovery claim fee within the specified period of one month. Priority is granted if the applicant pays within the specified period and is not granted if the applicant fails to pay or pay the recovery claim fee within the specified period.

(4) Submit the necessary formalities and documents within the prescribed time limit

If necessary, submit a copy of the prior application documents and the certificate of priority transfer, etc. If the priority is foreign priority, a copy of the prior application document and a Chinese title shall be submitted. Copies of the prior application documents may be obtained by the applicant voluntarily or by other means approved by the Patent Office. If the priority requested for restoration is the national priority, if the application date of the prior application is stated in the patent request, a copy of the prior application document shall be deemed to have been submitted.

For foreign priority, the applicant requesting priority shall be the same as the copy of the prior application documents or one of the applicants recorded in the copy of the prior application documents. If not, the applicant shall submit the priority transfer certificate and the Chinese title; for domestic priority, the applicant requesting priority shall be the same as the applicant recorded in the copy of the prior application documents, and if not, the priority transfer certificate and the Chinese title shall be submitted.

2. Review and notification

For the request for the restoration of the priority of the state application, the applicant receives the Notice of examination and approval of the Request for restoration of the right issued by the Patent Office, and restores the priority, if not the provisions, the priority shall not be restored. If the defects that can be overcome if the applicant fails to pay or pay the recovery right request fee, the priority claim fee within the prescribed time limit, and the defects in the form of the Priority right Request, the Patent Office will issue the Notice of Correction for the Restoration of the Right Procedure. The applicant shall make corrections within the time limit specified in the notice. If the conclusion of the Notice of Approval of the Request for Restoration is not to restore the priority, the types of problems involved such as:

(1) The claim for recovery is made after the expiration of the prescribed time limit and does not comply with the provisions of Article 36 of the Detailed Rules.

(2) The applicant fails to reply within the time limit specified in the Notice of Supplement the Procedures for Restoring the Rights issued by the Patent Office.

(3) The applicant fails to pay or pay the priority claim fee and the restoration claim fee within the time limit specified in the Notice of Correction issued by the Patent Office.

3. Relief channels

If the applicant receives the notice of examination and approval of the claim, he / she refuses to accept the notice, he / she may file an application for administrative reconsideration with the State Intellectual Property Office within 60 days from the date of receiving the notice, or file a suit with the Beijing Intellectual Property Court within 6 months from the date of receipt of receiving the notice.

(3) Priority restoration of PCT application to enter the national stage

According to Article 128 of the Detailed Rules, it mainly involves the following two situations:

First, PCT international application requires the right of priority, and if the international application Day has been approved by the acceptance bureau in the international stage within 2 months after the expiration of the priority period, the Patent Office generally no longer raises questions. When the international application enters the national stage, the applicant does not need to go through the resumption procedures again.

Second, if the PCT international application does not request the restoration of the priority of the applicant in the international stage, or makes the request for restoration but the acceptance bureau does not approve it, and the applicant has justifiable reasons, the applicant may request the restoration of the priority within 2 months from the date of entry. The corresponding procedures include: accurately filling in the information of the priority to be restored in the column of the International Application Statement, submitting the Request for Priority Restoration within the prescribed time limit, explaining the reasons, and paying the restoration claim fee and the priority claim fee. If a copy of the prior application documents has not been submitted to the International Bureau, a copy of the prior application documents and the Chinese title list shall also be attached.

[Case 7]

The applicant submitted a PCT International application to the International Bureau on 12 July 2022, requesting a priority in the PCT Request (24 June 2021) and in the international phase, and the International Bureau issued the decision notice on 12 August 2022 (PCT / RO / 159 form), agreeing to restore the priority information, disclosed in the international published text. This application has entered the national stage in China on January 23,2024. Does the applicant need to go through the formalities of priority restoration again?

According to the rules of the new article one hundred and twenty-eight and the relevant provisions of the guide, for the international stage has restored priority, enter the national stage, the applicant does not need to restore formalities again, but still should be written in the statement to accurately indicate the application date, application number and accept the name of the institution, and in the two months pay the corresponding priority fee.

[Case 8]

The applicant submitted a PCT International application to the International Bureau on 12 July 2022, requesting a priority in the PCT Request (the first application date is 24 June 2021) and requesting the restoration of the priority. Since the applicant does not pay the claim fee for the recovery of rights in the international stage, the International Bureau has not approved the restoration of the priority, but the information of the priority is disclosed in the international published text. This application has entered the Chinese national stage on January 23,2024. Does the applicant still have the opportunity to restore this priority?

According to article 128 of the detailed rules, for the request for restoration in the international stage but not approved by the acceptance bureau, if the applicant has justifiable reasons, the applicant may go through the resumption of priority within 2 months from the date of entry.

2. Priority requires an increase or correction of the system
(1) the right of priority requires the increase or correction of the system introduction

In accordance with Article 37 of the new Detailed Rules, if the patent applicant for an invention or utility model (excluding design) claims priority, he may, within 16 months from the priority date or 4 months from the application date, request to add or correct the priority request in the patent request. This system gives the corresponding relief opportunity to the applicant to take the initiative to correct the mistakes and increase of the priority requirement.

(2) The request to increase or correct the priority right shall also meet the following conditions
1. Request at least one priority when filing a patent application

The request for priority increase shall first comply with the provisions of Article 30 of the Patent Law, that is, at least one priority shall be claimed at the time of the patent application. For increased priority request, the request may be increased from one priority claim to multiple priority claim, but it cannot be increased from "no" priority claim to "have" priority claim.

[Case 9]

When the applicant submits an application for a patent for invention, no claim for priority is made (no priority information is filled in in the column of "claim for priority" in the request). After that, the applicant submits the Request for Increasing or Correct Priority Request to request the increase of priority request. Since the applicant did not fill in the priority information at the time of the application, that is, the patent Office issued the request to increase the priority request.

2. Make a request for an increase or correction within the prescribed time limit

After filing a patent application, the applicant shall, within 16 months from the priority date or 100 months before the Patent Office, submit the request for Increasing or Correct Priority (Form No.100052), and accurately fill in all the information in the request, as shown in Figure 5.among:

In the first column, the application number, the name of the invention and the information of the applicant shall be accurate;

The request type in the request content in the second column can check "increase priority" or "correct priority" according to the actual demand;

In the third column, the name of the original acceptance institution and the name of the added priority of the request, and the priority information already stated when submitting the patent application need not be filled in repeatedly;

In the statement of correction priority in the fourth column, the name of the original accepting institution and the first application date and the first application number of the correction priority.

[Case 10]

The applicant filed application C for invention patent A on January 21,2024, and filed the declaration in the written request for national priority A (the first application date is January 30,2023). Later, if the applicant finds that the declaration information is not filled in, it shall be another national priority B (the first application date is January 30,2023), so it submits the Request for Increase or Correction Priority Order on May 31,2024 to correct the priority order A.

In the case, the priority date was 16 months from January 30,2023, or May 30,2024; the application date was 4 months from January 21,2024, or May 21,2024. The applicant's request filed on May 31,2024 has exceeded the prescribed time limit and does not comply with the provisions of Article 37 of the Detailed Rules. The applicant shall request before May 30,2024, before the Patent Office is ready for publication.

If multiple priorities are required, the earliest application date of the first application shall be used as the time judgment benchmark. If the increased or corrected priority request may lead to a change of the earliest priority date, the priority date shall start from the earliest priority date of the change. The starting period should be adjusted simultaneously, such as the period for adding or correcting other priorities, the period for the submission of copies of the prior application documents and the certificate of priority transfer, the absence of novelty grace period, and the time for the submission of biological material samples for preservation, etc.

[Case # 11]

The applicant filed application C for invention patent on January 21,2024, and filed a declaration of priority B in the claim for invention patent (the first application date is April 30,2023). The subsequent applicant found that the requirement for priority A (January 30,2023) was omitted to request the additional priority requirement.

In this case, although the priority date of this application C is the first filing B for the patent application, the request for increased priority A before this date, the change of the earliest priority date, the earliest filing date of the required priority A (January 30,2023). The applicant shall request an increase of priority request within 16 months from the changed priority date January 30,2023 or 4 months from January 21,2024 in the case before May 30,2024 and before the Patent Office is prepared for publication.

[Case 12]

The applicant filed application C for invention patent on January 21,2024 and filed a declaration of priority B in the request (the first application date is April 30,2023). Subsequent applicant found that the omission of priority A request (prior application date for January 30,2023), so on April 15,2024 submitted "increase or correct priority request", request increase priority A, the request is within the prescribed period, and other procedures in accordance with the provisions, the patent office agreed to increase the priority A request.

The subsequent applicant found that the contents of the statement of Priority B were defective, so he submitted the Request for Adding or correcting the Priority Request on April 26,2024, requesting the correction of the requirement of Priority B. If the requirement of increasing priority A changes the earliest priority date, the period of correcting priority B should be adjusted simultaneously. After increasing the requirement of the priority A, the earliest priority date of patent application C has been changed to January 30,2023, the request correction priority request B should be adjusted to the earliest priority date from January 30,2023 within 16 months or January 21,2024, four months on May 30,2024, at the same time meet the patent office has not yet ready, the applicant can request correct priority request. In this case, the applicant submitted the Request for Increase or Correction of Priority Right on April 26,2024, which meets the requirements of the period within 16 months from the earliest priority date after the change. If the Request for Increase or Correction of Priority is submitted after May 30,2024, such as May 31,2024, the specified period is exceeded.

In addition, the period for copies of the prior application documents, the certificate of priority transfer, the grace period for no loss of novelty, and the time for submission of biommaterial samples for preservation should be adjusted according to the earliest priority date after adjustment.

According to the relevant provisions of the guidelines, delay request increase or correct the period of priority, not according to the second paragraph of article 6 of the "valid reason" request restore rights, but can according to the first paragraph of article 6 of the "irresistible reason" request restore rights, such as the applicant by typhoon, flood, earthquake, war, major outbreak, delay the priority request increase or correction request, can request to restore rights.

[Case 13]

On January 21,2024, the applicant filed an application for invention patent C on the same subject in January 20 24, and filed a claim for priority B (on February 20,2023). Subsequent applicants found that the requirement for priority A was missed (the first application date is January 21,2023). A on May 22,2024.

In this case, the applicant shall request A request to increase priority A before the earliest priority date, within 16 months from January 21,2023, or 4 months from January 21,2024, the application date, or before May 21,2024. The applicant's request for increased priority A filed on May 22,2024 is beyond the specified period and is not compliant. In such cases, the applicant delays the time limit of requesting the request of increased priority, and cannot request the right to "request the request of increased priority" for "other justifiable reasons" in paragraph 2 of Article 6 of the Detailed Rules. However, if the applicant delays the time limit due to "irresistible reasons" such as typhoon, flood, earthquake, war, or major outbreak, he may request the restoration of the right of "request to increase the priority claim".

3. Pay the fee within the prescribed time limit

If the request for increased priority right is involved, the priority right request fee (RMB 80 yuan / item) shall be paid at the same time as submitting the Request for Increase or Correction of Priority Right Request. Where the priority claim fee is not paid for the priority increase within the prescribed time limit, the request for the priority increase shall be deemed not to have been made.

4. Submit the necessary formalities and documents within the prescribed time limit

If necessary, copies of the prior application documents and certificates of priority transfer shall be submitted within 16 months from the priority date (if multiple priorities are required, meaning the earliest priority date). Submission requirements are provided in point 1. (4) of Part I (II) of this guidance.

(3) Review and notice

If the request for priority increase or correction does not comply with the requirements, the type of notification received by the applicant may include the notification.

The types of defects involved in the notice of correction, such as the Request for Increasing or Correct Priority Request, do not specify or misspecify the application date, the application number and the name of the original acceptance institution, and the applicant has submitted a copy of the prior application documents within the prescribed time limit.

Types of issues considered involved without a notification such as:

(1) Failure to request priority when submitting the application;

(2) Failing to make a request within the prescribed time limit, or failing to pay or fully pay the priority claim fee for increasing the priority claim at the expiration of the period.

(3) Failure to reply to the notice of the formalities within the time limit or still does not comply with the provisions after the correction.

Where the request to increase or correct the priority request complies with the provisions, the declaration of priority shall be deemed to comply with the provisions.

(4) Relief channels

If the applicant is deemed to have received the notice and he does not accept the notice, he may file an application for administrative reconsideration with the State Intellectual Property Office within 60 days from the date of receiving the notice, or file a suit with the Beijing Intellectual Property Court within 6 months from the date of receipt of receiving the notice.

3. Other matters to be noted for the application of the terms
(1) Other matters involving the increase or correction of priority

Under the circumstances stipulated in Article 36 of the Detailed Rules (the restoration of priority), the provisions of Article 37 of the Detailed Rules (the increase or correction of priority) shall not apply, that is, the increase of the priority or the restoration of priority cannot be corrected according to Article 36 of the Detailed Rules.

[Case 14]

The applicant filed patent application C on February 6,2024, and the claim for priority B (May 20,2023), and found the missed priority A, and the application date of A is February 1,2023. On May 15,2024, the applicant submitted the Request for Increase or Correction of the Priority Request, requesting the increased priority request A. In the case, the priority A requested by the applicant is the overdue priority, which belongs to the circumstances stipulated in Article 36 of the Detailed Rules, and the provisions of Article 37 of the Detailed Rules do not apply, that is, the increase of the extended priority cannot be requested.

(2) Matters needing attention concerning the invoking of the accession

The case of "restoration of priority" stipulated in Article 36 in the Detailed Rules and "right of priority requires increase or correction" shall not apply to the provisions of "citation of accession" in Article 45 stipulated in Article 37. That is, the priority involved in "invoking accession" cannot be the priority of recovery, nor the priority of increase or correction.

[Case 15]

The applicant filed Application B on February 20,2024 and filed A statement of priority A in the request (the first application date is January 12,2023).

At the date of application, the applicant uses a standard form developed by the Patent Office containing the accession statement. The applicant shall submit the Request for Restoration of priority on the application date, requesting the restoration of the priority. Other procedures shall also comply with the provisions. The Patent Office shall issue the notice of approval of the restoration of the right request, agreeing to restore the priority A.

After that, the applicant found that patent application B omitted part of the specification and requested to cite the corresponding contents of the specification of prior application A. On March 20,2024, the applicant submitted the confirmation confirmation statement, and submitted the specification and revised the replacement page. Since the priority A involved in invoking accession cannot be an overdue priority restored, the Patent Office issues a notice of the applicant.

[Case 16]

The applicant filed an application for A utility model on February 20,2024, using the standard form developed by the Patent Office and provided with the claim of priority A (prior application date January 12,2023) and the claim of priority B (prior application date March 12,2023). The applicant requests the restoration of the priority A within the prescribed time limit. Later, the applicant finds that the request of priority C (the prior application date is April 12,2023) and the patent application have omitted part of the specification, and requests the request of increasing priority C within the prescribed time limit and requests to invoke the corresponding contents of the prior application B.

In the case, the applicant made A claim of priority A when filing the patent application, and may request the restoration of priority A within the time limit specified in Article 36 of the Detailed rules. In addition, because the applicant in the patent application, filed the patent law of the deadline of priority B statement, meet the article 30 of the patent law in the patent application for at least one priority, so can request to increase priority C requirements, and quoted the first application B specification corresponding content. That is, in the application, the Patent Office may separately restore priority A, increase the requirement of priority C, and invoke the content of priority B.

Note: The restoration of priority, the increase of priority requirements or the correction system is the modification of the detailed rules. The understanding and application of the new system by all parties need some precipitation and accumulation. Therefore, at the beginning of the implementation of the system, the relevant rules are simplified as far as possible to reduce the operating cost. In the future, with the continuous enrichment of the operation experience of all parties and the gradual improvement of the application ability of all parties, the bureau will further study and improve the relevant rules to further meet the needs of the innovation subjects.