Newsletter
THE NEW SYSTEM OF LAY-ING-OPEN AND SUBSTANTIVE EXAMINATION
According to the 2001 amended Patent Law, an application for invention patent filed on or after 26 October 2002 will be subject to the new practices of laying open and substantive exami-nation requests. The following briefly intro-duces the new practice:
This practice is adopted to avoid repeated in-vestment in R&D. Upon receipt of an appli-cation for invention patent, the IPO will lay open the application 18 months after its filing date, unless the application does not comply with the formality requirement or there exist circumstances where the laying-open should not apply. For a patent application filed with priority claim, the afore-mentioned 18-momth period should start running from the day fol-lowing the date of the priority claim or the day following the date of the earliest priority claim, where applicable. Upon request by the ap-plicant, the IPO may lay open the application earlier.
An invention patent application will not be laid open under any of the following circum-stances: (1) where it is withdrawn within 15 months from the day following the filing date; (2) where it is related to confidential informa-tion pertaining to national defense or other national security matters; and (3) where it is detrimental to public order or good morals.
Within three years from the day following the patent filing date, any person may file a re-quest with the patent authority for a substan-tive examination. Such request may not be withdrawn. For a divisional application or a converted application for which the above 3-year period has expired, a request for sub-stantive examination can be filed within 30 days from the day following the date of divi-sion or date of conversion. In the absence of such request, the patent application should be deemed withdrawn. For a microorgan-ism-related application, the applicant, when filing a request for substantive examination, must submit the concerned certificate of vi-ability. If such request is filed by a third party, the patent authorities should notify the appli-cant to submit the certificate within a specified time period.
After a patent application is laid open but be-fore it is allowed and published, if a third party practices the invention for commercial pur-poses, the patent authority may, upon appli-cation, expedite its substantive examination. If the applicant serves a written notice of the content of his patent application to such third party, and the party continues to practice the invention commercially, the applicant may seek reasonable compensation after his ap-plication is irrevocably granted. A patentee may also seek reasonable compensation from any person who has the knowledge of the laying open of an invention patent application and continues to practice the invention com-mercially during the period before the appli-cation is allowed and published. The right to seek compensation as stated above does not affect the exercise of other rights. However, the right is barred if not exercised within two years from the day following the date of patent grant.
The patent authority may, ex officio, require an applicant to amend or supplement the speci-fication or drawings within a specified period. An applicant may make amendments or sup-plements to the specification or drawings within 15 months from the day following the patent filing date (or, where an international priority is claimed, from the day following the priority date). Beyond the 15-month period, an applicant may only make an amendment or a supplement at any of the following times:
1.when requesting a substantive examina-tion;
2.where a person other than the applicant requests a substantive examination, within three months after being served with a no-tice of the substantive examination;
3.within the response period for a notice is-sued by the patent authority informing its intended rejection of the application;
4.when applying for reexamination, or within the period for submitting a reexamination brief;
5.within the opposition defense period; and
6.within the period for filing a response against an ex-officio examination initiated by the patent authority.
The new practices only applies to invention patents filed on or after 26 October 2002, and not to new design or new utility patents. Since the new practices differ substantially from the original practices, we will closely monitor the development and keep our readers informed.