The China National Intellectual Property Administration (CNIPA) recently issued the Administrative Regulations of Collective Patent Examination (pilot scheme), which aims at improving the examination efficiency and quality of important patent applications. “Collective Patent Examination” means the collective processing of a group of patent applications focusing on the same key technology by the same applicant(s).
We would like to introduce herein the main aspects and features of the new Regulations as follows for your easy reference. You may also refer to the news in Chinese here: http://www.sipo.gov.cn/gztz/1141943.htm.
1. Eligibility of patent applications for Collective Patent Examination
Patent applications requesting collective examination shall meet all of the following preconditions:
(1) It involves a group of Chinese patent applications for invention surrounding to one “key technology”. Nevertheless, invention applications under the dual filing strategy where a utility model application and an invention application are filed on the same day for the same subject matter is excluded from the scope of collective examination.
(2) The group of invention patent applications to be examined have all entered into substantive examination procedure, and the date of entering into substantive examination procedure of these patent applications shall not exceeded one-year time span; Also, the number of these applications in the same group shall be no less than 50;
(3) These applications involve key competitive industries of the country or are of great significance to the interest of the country or the public;
(4) No other preferential examination policies such as prioritized examination or PPH has been enjoyed.
2. Documents needed for the request
The applicant requesting the collective examination shall submit the Administration Department of Patent Examination under CNIPA (hereinafter referred to as the “Examination Department”) with the following supporting documents:
1.the written request of collective examination with the signature or seal of all patent applicants;
2.the list of the invention patent applications to be examined (in both paper version and electronic version);
3.the elaboration of the reasons why a collective examination is filed, along with the explanation of the relationship of each patent application with the said “key technology”;
The above required documents for collective examination shall be submitted to the Examination Department through mailing in paper form, not through electronic filing route, wherein electronic list of the patent applications should be sent along with the paper documents in form of CD-ROM media.
3. Applicant’s role in coordination after the approval of collective examination
Once collective examination is approved, the patent applicant(s) shall actively cooperate with the patent office, including providing relevant technical materials when needed, arranging technical briefing meetings with examiners, timely providing feedback on any problems during collective examination and so on.
If an office action is issued during the examination procedure, the time for answering the office action is the same as that of the normal patent application. The Examination Department normally starts the examination work of an application after 3 months from its entry of the substantive examination stage, but there is no examination time limit for the Examination Department to end up the prosecution period.
There is no official fee for submitting the request for the collective examination.
4. Circumstances under which collective examination shall be terminated
During the examination procedure, if one of the following situations arises, the CNIPA can terminate the collective examination:
-The applicant submits false materials in violation of the principle of good faith;
-The applicant does not cooperate with the examiners when needed;
-The applicant expressively requests to terminate the collective examination.
(Source: CCPIT Patent and Trademark Law Office)