Three major ‘remedial’ systems taken from the PCT Regulations have been introduced in the third revision of the Implementation Regulations of the Chinese Patent Law in 2023 (hereinafter referred to as the “Implementation Regulations”). We previously discussed one of these remedial systems, Incorporation by Reference based on Rule 45 of the Implementation Regulations, which allows an applicant to rectify missing documents or parts of the document two months from the filing date. In this article we will be focusing on the other two new systems—the restoration of the right of priority and the addition or correction of a priority claim, namely new Rules 36, 37 and 128.
Prior to the new Implementation Regulations, applicants in China could only “restore” the right of priority under very limited circumstances. For example, a procedural delay—such as failure to respond to the Notice of Rectification within the specified time limit—which resulted in the priority claim being deemed not requested.
The Implementation Regulations provide new means of restoring the right of priority, or adding or correcting a priority claim for applications in China after the 12-month deadline from the priority date.
Summary of the New Provisions
Eligibility
- Invention and utility model applications filed on or after 20 Jan 2024 or national phase applications where the two-month period from the entry date ends after 20 Jan 2024 are eligible to make use of the new provisions.
- Divisional applications or design applications are not eligible for restoring, correcting, or adding a priority claim
As to the updated Examination Guidelines, Sections 6.2.6.2 and 6.2.3 have been added in Part 1 Chapter 1 regarding the procedural details of restoration and correction/addition. 1-4
Rule 36 Restoration
Rule 36 allows an applicant of a Chinese invention or utility model patent application to request for restoration of the right of priority within two months after the expiration of the 12-month priority deadline (herein after referred to as ‘restoration’).1
The request based on Rule 36 and the necessary procedures must be completed within two months from the expiration of the 12-month priority deadline, including paying the restoration request fee and priority claim fee. Other necessary procedures (such as submitting a certified priority document or proof of assignment etc.) must be completed at the same time as the filing of the request for restoration. The Examination Guidelines further clarify that “in the case of a subsequent application filed after the expiration of the 12-month period from the filing date of the earlier application, and before the patent office has prepared for publication, the applicant may request the restoration of the priority right within two months from the expiration of the time limit.” As seen, the real implication of “restoration” as stipulated in Rule 36 is to provide applicants the flexibility to push back the absolute filing deadline from 12-month to 14-month.2
Rule 37 Addition or Correction
Rule 37 has been introduced to allow an applicant to request for addition or correction of a priority claim within 16 months of the priority date or four months from the filing date (herein after referred to as ‘addition/correction’).3
The Examination Guidelines also clarify that “applicants who have claimed priority may, within 16 months from the priority date or four months from the filing date, and before the patent office has prepared for publication, request the addition or correction of the priority claim.” In the case of correction/addition, the requirement is that there is at least one priority claim at the time of filing the application. The request for addition/correction must be made within 16 months from the priority date or four months from the filing date. In the case of adding a priority claim, a priority claim fee must also be made at the time of filing the request.4
Limitations
Note that the provisions in 36 and 37 cannot be used in addition to each other. For example, once the right of priority has been restored based on Rule 36, the applicant may not further correct or add a priority claim based on Rule 37.
The prescribed time periods in Rule 36 and Rule 37 are also not eligible for time extensions. If the prescribed time limit has been missed, the right to request for restoration, addition or correction cannot be restored.
As discussed in our previous article about incorporation by reference, if the priority claim of an application has been restored, corrected, or added based on Rule 36 or 37, any missing parts from this priority claim cannot be further incorporated based on Rule 45.
Rule 128 Restoration of the Right of Priority for National Phase Entry
For national phase entry (NPE) applications in China, Rule 128 has been introduced:
- restoration of a priority claim during the international phase is recognized as having submitted a request for restoration based on Rule 36; and
- if the applicant has not filed a request for restoration during the international phase, or if the request has not been approved by the Receiving Office, the applicant can submit a request for restoration within two months from the national phase entry date.5
The table below summarizes the updates in the Examination Guidelines.
|
PCT application filed within the 12-14 month period from the priority date |
Examination Guidelines (2021), Part 3 Chapter 1 Section 5.2.1 and 5.2.5 | Latest Examination Guidelines, Part 3 Chapter 1 Section 5.2.5.1 and 5.3 6,7 |
|
applicant has requested for restoration; the request has been approved by the RO |
Priority right deemed not claimed in NPE |
Priority claim is recognized in the NPE; no need to submit request for restoration again |
|
applicant has not requested for restoration |
N/A |
Applicant can request restoration of the right of priority within two months from NPE filing date |
|
Applicant has requested for restoration; the request has not been approved by the RO | ||
|
RO found defects in the priority claims (Rule 26bis.2 in Regulations under the PCT) and the priority claim was considered not to have been made (‘considered void’) |
Applicant can request restoration of the right of priority at the time of filing the NPE |
Thoughts
These three new Chinese ‘remedial’ systems have harmonized Chinese Patent Law with international standards, including the following corresponding PCT practices:
- Rule 36 Restoration (this article)
- Rule 37 Correction or Addition (this article)
- Rule 45 Incorporation by Reference.
The provision in Rule 36 provides applicants the flexibility to push back the absolute filing deadline from 12-month to 14-month. If a PCT international application has been filed within the 12-14-month period from the priority date, Rule 128 allows restoration of the priority right when the application enters China. For direct Chinese invention and utility model applications, Rule 37 can be used to ‘fix’ the priority claim in cases where the priority claim in the filing request had been omitted or filled incorrectly. There is also Rule 45 for fixing the missing information/documents via incorporation by reference, which was discussed in our previous article.
While China now provides applicants with these additional remedies for deadline extension, incorrect priority claims, or even missing documents, it is important to recognize that there are certain limitations when utilizing these systems. Ultimately, each application is meant to only get ‘one chance’ in terms of the remedial opportunities as stipulated in Rule 36, Rule 37 or Rule 45.
Applicants should also be cautious about the underlying requirement that the request based on Rule 36 or 37 must be made “before the patent office has prepared for publication.” If an application has requested early publication, it will be possible that the patent office completes the preparation for publication by the 14-month or 16-month deadlines mentioned above, and the application will lose its chance to restore, add or correct its priority claim.
Furthermore, it is important to recognize that, even though Rule 36 effectively provides applicants the flexibility to file an application between the 12-14-month period from the priority date and claim priority, one must be very, very careful when taking advantage of this flexibility.
For example, applicants interested in obtaining worldwide patent protection should still file their PCT application by the 12-month Paris Convention deadline to ensure that priority can be maintained globally. To date, some contracting states, including South Korea, India, Indonesia and the Philippines, do not accept restoration of the right of priority under the PCT rules either as receiving Office or as designated Office. In these countries, PCT applications filed within 12-14 months from the priority date will lose their priority right (and likely be susceptible to more novelty or inventiveness destroying prior art). A complete list showing the contracting states that accept or do not accept restoration of priority can be found on WIPO.8
Although these new provisions may provide some flexibility, we generally still recommend filing by the 12-month Paris Convention deadline. Filing a PCT by the 12-month date ensures that priority will be maintained globally. As part of our practice, we will continue to remind clients to file by the 12-month deadline, and will only consider these new provisions very careful, and only if absolutely necessary. Having said that, we think it’s great that these new provisions are available. In some cases, there might be a strategic reason to take advantage of them. Furthermore, mistakes certainly do happen, and it’s reassuring to know that there are now more ways to restore priority in China, even if you completely miss the 12-month date.
This article is for general informational purposes only and should not be considered legal advice or a legal opinion on a specific set of facts.
About the Authors
Audrey Cheung is a Patent Technology Specialist at Eagle IP, a Boutique Patent Firm with offices in Hong Kong and Shenzhen.
Yolanda Wang is a Principal, Chinese Patent Attorney, and Chinese Patent Litigator at Eagle IP, a Boutique Patent Firm with offices in Hong Kong and Shenzhen.
Jennifer Che, J.D. is President & Managing Director and a US Patent Attorney at Eagle IP, a Boutique Patent Firm with offices in Hong Kong and Shenzhen.
Rule 36: If an applicant exceeds the deadline specified in Article 29 of the Patent Law and files an invention or utility model patent application with the patent administration department of the State Council on the same subject matter, they may, if there is a valid reason, request the restoration of priority within two months from the expiration of the deadline.
↩︎Examination Guidelines Part 1 Chapter 1 Section 6.2.6.2
In accordance with Rule 36 of the Implementation Regulations of the Patent Law, if a subsequent application is filed after the expiration of the 12-month priority period from the filing date of the earlier application, but before the patent office has prepared for publication, the applicant may, within two months from the expiration date, request the restoration of the right of priority.When requesting the restoration of the right of priority, the applicant should submit a request for restoration, stating the reasons, and pay the restoration request fee and the priority claim fee. The applicant should also fulfill other necessary procedures, such as submitting a copy of the earlier application and documents proving the transfer of the priority right. If the requirements are met, the priority right will be restored, and the examiner should issue a notification of approval for the restoration request. If the requirements are not met, the examiner should issue a notification of approval for the restoration request and provide reasons for not granting the restoration.The situations specified in Rule 37 of the Implementation Regulations of the Patent Law are not subject to the provisions of Rule 36 of the Implementation Regulations of the Patent Law.
The provisions of Rule 6, Paragraphs 1 and 2, of the Implementation Regulations of the Patent Law do not apply to the applicant’s delay in the time limit specified in Rule 36 of the Implementation Regulations of the Patent Law.
↩︎Rule 37: If an applicant for an invention or utility model patent requests priority, they may, within 16 months from the priority date or 4 months from the filing date, request the addition or correction of priority claims in the request document.
↩︎Examination Guidelines Part 1 Chapter 1 Section 6.2.3In accordance with Rule 37 of the Implementation Regulations of the Patent Law, if an applicant requests priority, they can, within 16 months from the priority date or within 4 months from the filing date, request an addition or correction of the priority claim before the patent office has prepared for publication.
When requesting an addition or correction of the priority claim, the applicant should request the priority at the time of filing and submit a request for addition or correction of the priority claim within the specified period. If requesting an addition of the priority claim, the applicant should also pay the priority claim fee at the same time. Failure to request priority at the time of filing, failure to submit the request within the specified period, or failure to pay the priority claim fee within the deadline will result in the request being deemed as not filed.
The request for addition or correction of the priority claim should clearly state the filing date, application number, and name of the original receiving office of the prior application. If any of these items are not stated or are incorrectly stated, and the applicant has submitted a copy of the prior application within the specified period, the examiner should issue a notice for procedural rectification. If no response is received within the specified period or if the rectification still does not comply with the requirements, the examiner should issue a notice of considering the request as not filed.
If the request for addition or correction of the priority claim meets the requirements, it shall be deemed that the priority claim complies with the requirements. The examiner should also examine the priority claim according to the provisions of Sections 6.2.1 and 6.2.2 of this chapter.
The situations specified in Rule 36 of the Implementation Regulations of the Patent Law are not subject to the provisions of Rule 37 of the Implementation Regulations of the Patent Law.
The provisions of Rule 6, Paragraph 2, of the Implementation Regulations of the Patent Law do not apply to the applicant’s delay in the time limit specified in Rule 37 of the Implementation Regulations of the Patent Law.
↩︎Rule 128: If the filing date of an international application is within two months after the expiration of the priority period, and the receiving office in the international phase has already approved the restoration of priority, it shall be deemed that the request for restoration of priority has been made in accordance with the provisions of Article 36 of these regulations. If the applicant did not request the restoration of priority during the international phase or if the request for restoration of priority was made but not approved by the receiving office, the applicant may, if there is a valid reason, request the restoration of priority from the date of national phase entry within two months by the patent administration department of the State Council.
↩︎Examination Guidelines Part 3 Chapter 1 Section 5.2.5.1
If an international application requests priority and the international filing date falls within two months after the expiration of the priority period, and the restoration of the priority has been approved by the receiving office during the international phase, the patent office generally does not raise any questions. When the international application enters the national phase, the applicant does not need to go through the restoration procedure again. If the applicant did not request the restoration of the priority during the international phase or if the restoration request was made but not approved by the receiving office, and the applicant has valid reasons, they can request the restoration of the priority within two months from the entry date. They should submit a request for restoration of the priority, provide reasons, and pay the restoration request fee and the priority claim fee. If the applicant has not submitted a copy of the prior application to the international bureau, they should also attach a copy of the prior application.If the restoration procedure is not completed as described above, the examiner should issue a notice considering the request for priority as not filed.If the international application has been declared as not having made a valid priority claim according to Rule 26bis.2 of the Patent Cooperation Treaty by the international bureau or receiving office, the applicant can submit a request for restoration of the priority within two months from the entry date. They should also pay the restoration request fee and the priority claim fee. If the applicant has not submitted a copy of the prior application to the international bureau, they should also attach a copy of the prior application as evidence for restoration. The condition is that the relevant information regarding the priority claim considered as not filed, along with the international application, has been published.If the restoration procedure meets the above requirements, the restoration of the priority is granted, and the examiner issues an approval notice for the restoration request. If it does not meet the requirements, the priority is not restored.The provisions of Rule 6, Paragraphs 1 and 2, of the Implementation Regulations of the Patent Law do not apply to the applicant’s delay in the time limit specified in Rule 128 of the Implementation Regulations of the Patent Law.
↩︎Examination Guidelines Part 3 Chapter 1 Section 5.3[…] It should be noted that if an international application requests priority and the international filing date falls within two months after the expiration of the priority period, the applicant, with valid reasons, can request the restoration of the priority within two months from the entry date based on the provisions of Rule 128 of the Implementation Regulations of the Patent Law (refer to Section 5.2.5.1 of this part).
↩︎Restoration of the right of priority by receiving Offices (RO) and designated Offices (DO) under PCT Rules 26bis.3 and 49ter.2 (Last updated 14 March 2024), https://www.wipo.int/pct/en/texts/restoration.html
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