China’s National Intellectual Property Administration Releases Guidelines for Delayed Examination of Invention Patent Applications

On August 30, 2023, China’s National Intellectual Property Administration (CNIPA) released the Guidelines for Delayed Examination of Invention Patent Applications (发明专利申请延迟审查办理指南).  Delayed examination has many potential benefits including delaying incurring fees associated with prosecution (e.g., attorney fees) and potentially allowing for the crafting of claims for stronger reads on products that emerge after the initial patent application filing. This latter may be especially useful as China generally doesn’t allow long chains of divisionals as in the United States.  Note the Guidelines do not state how delayed examination will effect Patent Term Adjustment (PTA) but presumably delayed examination will reduce PTA.

A translation of the Guidelines follow:

1. What are the benefits of the applicant filing a “delayed examination”?

The delayed examination of an invention patent application has the following benefits:

1. Interfering with competition through the pending claims in the invention patent application with multiple possible amendments thereby interfering with R&D by rivals in related fields and increasing economic costs and time to enter the market.

2. In the process of formulating international standards, national standards and industry standards, etc., there is an opportunity to adaptively modify the protection scope of the claims and benchmark against relevant standards.

3. Have the opportunity to enjoy the convenience of the latest examination policies, such as supplementary experimental data, storage media in the computer field, protection of computer program products, etc.

4. Consider whether to continue the patent examination process according to the life cycle of the product and changes in the market situation.

5. The timing of obtaining patent rights is better coordinated with the market-oriented operation of patents.

2. Is there a fee for requesting a “delayed examination”?

There is no fee for requesting a delayed review.

3. “Who” and “when” can file a “delayed examination” request?

The request for delayed examination of an invention patent application shall be submitted by the applicant at the same time as the request for substantive examination.

4. How long can the “delayed examination” be delayed?

The deferment period for an invention patent application is 1, 2 or 3 years from the effective date of filing the request for delayed examination. The request for delayed examination of an invention patent application becomes effective from the date when the request for substantive examination becomes effective.

Combining the strategy of delaying examination and postponing the request for substantive examination, invention patent applications can obtain up to 6 year delay period from the priority date.

After the expiration of the delay period, the patent application will be pending in order based on the expiration date of the period, and will not be sent to the examiner immediately.

5. How to make a “delayed examination” request?

The “Delayed Examination” of the invention patent application adopts a request system, and the applicant needs to check the box ④ when submitting the “Request for Substantive Examination” of the invention patent application (see the figure below for details).

6. Does a “delayed examination” request need to be reviewed?

Delayed examination does not need to be reviewed, and it will automatically take effect when the substantive examination takes effect, and the applicant will be notified in the notice of entering the substantive examination stage.

7. What are the precautions for “delayed examination”?

According to the current relevant regulations, the applicant should pay attention to the following matters when requesting a delayed examination:

1) An invention patent application needs to submit a delayed examination request at the same time as submitting a request for substantive examination. If the opportunity is missed, the request for delayed examination cannot be submitted later;

2) The delayed examination of the invention patent application extends the time for waiting for examination , and does not affect other deadlines in the examination process;

3) There are 3 options for the delayed examination period of the invention patent application, which are 1 year, 2 years, and 3 years, and the applicant can choose according to actual needs;

4) When necessary, the Patent Office may initiate the examination procedure on its own and notify the applicant that the period of delayed examination requested by the applicant is terminated.

The original text of the Guidelines is available here (Chinese only).

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