SIPO speeds up invention patents
September 12, 2012 | BY
clpstaff &clp articles &New Measures from SIPO could see invention patents granted in a year, but questions remain over how many applications examiners can push through that quickly
SIPO promulgated the Measures for the Administration of Priority Review of Invention Patent Applications (发明专利申请优先审查管理办法) on June 18 and they become effective on August 1.
“Undoubtedly, the Measures are very important as they are the first written documentation on fast examination for both domestic and foreign applicants,” said Wang Yanjiang, a partner at Unitalen in Beijing.
The State Intellectual Property Office receives over 1.5 million patent applications ever year, around 30% of which are applications for invention patents. It usually takes three years or more to get an invention application granted. For some applications involving new and complicated technology, the examination stage can take even longer.
“With the significant increase of applications before SIPO ever year, they are already at capacity and it is not clear how many applications they can examine in an accelerated manner,” said Martin Meng, head of the patent practice at Chang Tsi & Partners.
The Measures apply to invention patent applications involving energy conservation, new energy, alternative energy vehicles and low-carbon technology. Under Article 2 of the Measures, eligible applications can be examined with priority review over regular applications and will be completed within one year.
A draft of the Measures was circulated in December last year. The draft included utility model and design patents. It is unclear why only invention patents made it into the final version, but it is likely SIPO wants to test the system with invention patents first before extending the scope.
Other differences include that in the draft either the applicant or the examiner could ask for the patent to be fast-tracked, but only the applicant can request for expedited approval under the final version.
Requirements under the Measure include: applications must be filled electronically; forms must also be submitted to the local patent office for approval; and a request for a search report is essential.
“The fast examination procedure only goes into effect after the application has entered into the substantive examination procedure,” said Wang.
According to Meng, applicants should be careful as the Measures are relatively new and still only in the initial stage. “Different local intellectual property offices may have different requirements,” he added.
The Measures are in line with the government's policy to develop industries involving new technology. The eligible areas of energy conservation, new energy, alternative energy vehicles and low-carbon technology are consistent with development priorities included in the national industry policy.
In 2008, the government proposed a National IP Strategy and cited IP protection as a means to creating an innovation-driven economy. “Accelerating the examination of patent applications provides a fast-track for IP protection and definitely encourages investment and development in these industries,” said Meng.
It is unclear how effective the Measures will be as ultimately it depends on how many applications will be examined. According to Article 5, the number of applications with accelerated examination depends on the workload of SIPO.
In addition, Article 7 states that all requests must first be approved by local intellectual property offices. This raises questions over impartiality, as offices will consider the local economic contribution of the application.
By David Tring
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