Newsletter
Amended “China Patent Examination Guidelines” to Take Effect on January 1, 2026
The China National Intellectual Property Administration (hereinafter referred to as “CNIPA”) issued a Decision No. 84 on 13 November 2025, announcing amendments to the “Patent Examination Guidelines.” The amended “Patent Examination Guidelines” (hereinafter referred to as the “Guidelines”) will take effect on 1 January 2026. The key points of the amendment are as follows.
I. Regarding “Two Applications on Same Invention-Creation” (also known as “Same-Day Dual Filing”) Patent Filing Mechanism
A. Background
The “Same-Day Dual Filing” patent filing mechanism allows, for the same invention-creation, the applicant to file both an invention patent application and a utility model patent application on the same day. At the time when the CNIPA decides to grant the invention patent application, the applicant may abandon the utility model patent, or the applicant may, through amending the claims of the invention patent application, render that the subject matter(s) claimed in the invention patent application differ from the one(s) in the already granted utility model patent, and under such situation, both patents may be granted.
The “Same-Day Dual Filing” system features distinctly the Chinese characteristics and represents a special form of prohibition against double patenting principle. The background for such a unique patent filing mechanism is as follows. In the mid-1990s, there was a serious backlog in the CNIPA's examination of invention patent applications. Some invention patent applications required 6–7 years to be granted (if the application was considered patentable after substantive examination), and the examination period for certain cases even exceeded as much as 10 years, which caused patent applicants not being able to obtain invention patent protection in a timely manner. Facing with strong reactions from patent applicants and the general public, the CNIPA, without amending the Patent Act or its Implementing Regulations at that time, adopted a new measure allowing patent applicants to file both an invention patent application and a utility model patent application for the same invention-creation on the same day. If the invention patent application was found to meet patentability requirements through substantive examination, the applicant could be granted invention patent as long as the already obtained utility model patent rights was abandoned by the applicant. The said Same-Day Dual Filing patent filing mechanism allowed applicants to enjoy the advantages of filing a utility model patent application (such as, no need for substantive examination and faster grant), while also retaining an opportunity and benefits of obtaining an invention patent (i.e., relatively higher validity and a longer term of protection—20 years for invention patents, 10 years for utility models).
This Same-Day Dual Filing filing mechanism was formally incorporated into the Patent Act during its third amendment in 2008. According to Article 9, Paragraph 1 of the 2008 Patent Act, “Only one patent right shall be granted for the same invention-creation. However, where the same applicant files, on the same day, both a utility model patent application and an invention patent application for the same invention-creation, and the utility model patent right obtained earlier has not yet terminated, the applicant may be granted the invention patent right if it declares abandonment of the utility model patent.”
According to the legislative intent of the Patent Act, under the “Same-Day Dual Filing" filing mechanism, only when the applicant abandons the already granted utility model patent which is still valid, can the invention patent application be granted. If the applicant chooses to abandon the utility model patent, CNIPA will issue a notice of grant for the invention patent. In this situation, the utility model patent right will terminate as of the date of announcement of the invention patent grant, and the applicant may still enforce its utility model patent right up to the date of abandotermination date. If the applicant chooses to retain the utility model patent, the invention patent application will not be granted, thus avoiding the double patenting issue.
B. Previous Guidelines
As stated above, under the legislative intent of the Patent Act, in case of the “Same-Day Dual Filing” patent filing mechanism, the utility model patent must be abandoned so that the invention patent will be granted. However, under the previous Guidelines, when examining an invention patent application filed under the “Same-Day Dual Filing” filing mechanism, if the utility model patent had already been granted and the invention patent application is considered meeting the patentability requirements, the applicant could make one of the below choices: (1) to abandon the utility model patent so that the invention patent could be granted (if applicant does not abandon the utility model, the invention patent would not be allowed and granted), or (2) to amend the claims of the invention patent application to differentiate the subject matter(s) claimed therein from the one(s) claimed in the utility model patent, thereby allowing the invention patent to be granted without abandoning the utility model patent (i.e., both the invention patent and the utility model patent are granted). In practice, most applicants chose the second approach, thereby obtaining broader protection without violating the double patenting requirement.
C. Amended Guidelines
The recent amendments to the Guidelines have eliminated the aforementioned second option available to applicants (i.e., the applicant is not allowed to amend the claims of the invention patent application). An applicant using the Same-Day Dual Filing filing mechanism can now only choose to “abandon the utility model patent right” in order to obtain the grant of the invention patent. The specific provisions in the amended Guidelines are as follows (which are almost identical to the wording of Paragraph 1 Article 9 of the Patent Act and Paragraph 4 Article 47 of the Implementing Regulations of the Patent Act):
Where the same applicant files both a utility model patent application and an invention patent application for the same invention-creation on the same day, and if, at the time of filing each application, the applicant specifies that another patent application has been filed for the same invention-creation under the Same-Day Dual Filing filing mechacism, if, after examination, no grounds for rejection are found for the invention patent application, the CNIPA shall notify the applicant to “declare abandonment of the utility model patent” within a prescribed period. If the applicant declares abandonment, the CNIPA shall make a decision to grant the invention patent, and simultaneously publish the applicant’s declaration of abandonment of the utility model patent rights when announcing the grant of the invention patent. If the applicant does not agree to abandon the utility model patent, the CNIPA shall reject the concerned invention patent application. Upon the announcement of the grant of the invention patent, it shall be stated that the patent term of the abandoned utility model patent shall terminate as of the date of the announcement of the grant of the invention patent.
In addition, the following points also underlie this amendment. Firstable, the CNIPA has significantly improved efficiency and speed of patent examination in recent years, and the examination period for invention patent applications has been greatly reduced. Also, the current Chinese patent practice provides various mechanisms for accelerating the examination of invention patent applications (e.g., PPH, prioritized examination, fast-track pre-examination, centralized examination, etc.). Given the above, the examination period for invention patent cases is now much shorter than before, and the demand for the “dual filing” system by applicants has relatively decreased.
Furthermore, the following additional points regarding the “Same-Day Dual Filing" filing mechanism should be also noted.
1. As of January 20, 2024, when conducting the preliminary examination of utility model patent applications, in addition to the novelty requirement originally covered in the preliminary examination, the "obvious inventiveness requirement" is now also covered in the said preliminary examination of utility model patent applications. This may cause the examination period for utility model patent applications be longer than in the past, and the grant rate for utility model patent application may decrease. Under the current practice, the examination of utility model patent applications is, in nature, no longer merely a “formal examination” as before, but, to a certain extent, now involves substantive examination including the requirement of obvious inventiveness.
2. According to the amended Guidelines, under the “Same-Day Dual Filing" filing mechanism, if the invention is granted through abandoning the utility model patent, the patent term adjustment (PTA) mechanism does not apply to the said invention patent.
Accordingly, the willingness of applicants to use the “the “Same-Day Dual Filing" filing mechanism after implementation of the amended Guidelines needs to be closely monitored.
II. Inventiveness for Invention and Utility Model Patent Applications
The standard for assessing the inventiveness of an invenion/creation has always been an important subject of discussion worldwide and it is always a challenging issue in patent examination practice. The amended Guidelines dictates that “Features that do not contribute to the solution of the technical problem, even if such features are added into the claims, generally will not affect the inventiveness of the technical solution.”
In short, under the amended Guidelines, if the feature(s) added to the claims are unrelated to the technical problem to be solved, such features will be deemed not making contribution to the inventiveness of the invention. Therefore, in future practice, the determination of the “technical problem to be solved” will be crucial, and features added to overcome a lack of inventiveness should, in principle, be related to that technical problem.
III. Examination Standards for Patent Applications Related to Artificial Intelligence
In recent years, with the rapid development of AI and related technologies, these technologies have been applied across various industries. The CNIPA has previously issued multiple regulations and improvements regarding the application and examination rules for AI-related patent applications. The current amendments to the Guidelines, based on the “Trial Guidelines for Examination of AI-Related Invention Patent Applications” issued in December 2024 (please see attachment below), address the difficulties in the application and examination of AI-related patents, with the following key points.
https://www.leeandli.com/tw/newdl/15bec1ee-0810-4cb0-9a2f-801763548641
https://www.leeandli.com/tw/newdl/15bec1ee-0810-4cb0-9a2f-801763548641
1. Further Clarification of the Examination Standard under Article 5 Paragraph 1 of the Patent Act
To avoid ethical risks arising from the development of AI and to ensure that the content of relevant patent applications complies with national laws, regulations, and social ethics, the amended Guidelines specifically provide that “invention patent applications containing algorithmic features or business logic and method features, if they violate laws, social morality, or harm public interests, cannot be granted patent rights,” and the amended Guidelines provide two examples, in which one example involves a “big data-based mattress sales assistance system in a shopping mall,” which cannot be granted patent rights due to violation of the Personal Information Protection Law of the PRC, and a second example involves a method for establishing an emergency decision-making model for unmanned vehicles, which cannot be granted patent rights due to violation of social morality.
Paragraph 1, Article 5 of the Patent Act provides that no patent rights shall be granted for inventions/creations that violate laws, social morality, or harm public interests. The amended Guidelines clearly require that inventions/creations involving AI or big data may not violate laws (e.g., the Personal Information Protection Law) or social morality (e.g., must not contain content that is discriminatory based on gender or age), or harm public interests.
2. Further Clarification of the Inventiveness Examination Rules for AI Technologies
The amended Guidelines adds two examples of inventiveness examination. One example involves “a method for identifying the number of ships,” which illustrates that if the claimed solution involves an algorithm or model that, compared to the prior art, although the scenario and object differ (identifying the number of ships vs. identifying the number of fruits on a tree), there is no substantive change in algorithmic process, model parameters, etc., then the solution is generally not considered inventive. Another example involves “a method for establishing a neural network model for classifying scrap steel grades,” where the amended Guidelines explain: if the claimed solution, compared to the prior art, even if the application scenario is the same or similar, but substantive adjustments have been made in algorithmic process, model parameters, or other aspects, and there is no technical motivation for such adjustments in the prior art, and the application solves a different technical problem and achieves beneficial technical effects, then the solution will be considered inventive.
From these two examples, it can be seen that, under the amended Guidelines, when determining whether AI technology is inventive, it is necessary to assess whether there is substantive innovation (i.e., in algorithmic process or model parameters). Only if so, will it be considered inventive.
3. Addition Requirements for Drafting Specifications for AI-Related Patent Applications
Algorithms or models often have a “black box” nature, with internal structures and operating mechanisms that are difficult to observe directly. Drafting the specification of AI-related inventions to provide sufficient disclosure has always been a challenge. The amended Guidelines clearly provide the following.
“If the invention involves the construction or training of an AI model, the specification generally needs to clearly describe the necessary modules, layers, or connection relationships of the model, as well as the specific steps and parameters required for training; if the invention involves the application of an AI model or algorithm in a specific field or scenario, the specification generally needs to clearly describe how the model or algorithm is combined with the specific field or scenario, and how the input and output data of the algorithm or model are set to indicate their internal relationships, so that one of ordinary skill can implement the solution of the invention based on the content of the specification.”
This provision specifically explains how to meet the requirement of sufficient disclosure for two common situations in AI-related invention patent applications.
The amended Guidelines also add, for illustration, Example 20 “A method for generating human facial features” and Example 21 “A method for predicting cancer based on biological information.” Example 20 shows that although the technical means adopted in the invention are not explicitly described in the application documents, if such technical means constitute known technique for solving the technical problem, the lack of explicit disclosure in the specification will not result in insufficient disclosure. Example 21 shows that if the means used (including the internal relationship between input and output) are neither explicitly described in the application documents nor known technique, and the solution cannot be specifically implemented or the technical problem cannot be solved based on the specification, then the application documents should be considered as not sufficiently disclosing the claimed solution.
IV. Examination Standards for Patent Applications Related to Bitstream
The amended Guidelines add Section 7 to Chapter 9 of Part II, providing specific provisions on the examination of the subject matter of invention patent applications involving bitstreams, as well as requirements for drafting the specification and claims, as follows.
1. Patentable Subject Matter
According to Subparagraph 2, Paragraph 1, Article 25 of the Patent Act, rules and methods for intellectual activities are not granted patent rights. Therefore, the amended Guidelines clearly state that “a pure bitstream does not constitute patentable subject matter.” Section 7.1.1 of Chapter 9, Part II of the amended Guidelines explicitly provides that, if the subject matter of a claim merely relates to a pure bitstream, such claim falls under the rules and methods for intellectual activities as provided in Subparagraph 2, Paragraph 1, Article 25 of the Patent Act, and does not constitute patentable subject matter.
2. Drafting Requirements for Claims and Specifications
To support the streaming media industry in building new productive forces with intellectual property rights as key elements and foster an equitable competition market environment, the amended Guidelines add “examination rules and drafting requirements for bitstream-related patent applications” to promote technological progress, improve IP protection for technological innovation in the streaming media industry, and guide innovative entities in new fields and business models to better utilize the patent system, thereby providing institutional support for technological innovation in the streaming media industry.
Regarding drafting claims of bitstream-related inventions, the amended Guidelines provide the following.
(1) For claims directed to methods of storing/transmitting bitstreams, they shall be based on the specific video encoding method that generates the bitstream, and the claims may be drafted by reference to the specific video encoding method claim or by including all features of the specific video encoding method.
(2) For claims directed to computer-readable storage media storing bitstreams, they shall include “medium + program/instructions + bitstream + processor executing the program/instructions to implement the video encoding method to generate the bitstream.”
It should be noted that, if the applicant would like to voluntarily amend Chinese patent application documents after filing, he/she/it shall make such amendments within the statutory period (i.e., at the time of requesting substantive examination or within three months of receiving the notice of entry into substantive examination). Moreover, the CNIPA adopts a relatively strict standard in examining whether the amendments go beyond the scope of the original application documents. Applicants should pay attention to such requirements when drafting patent applications to avoid future procedural or substantive disadvantages in the patent application process.
V. Examination Standards for Patent Applications Related to Biological Breeding
According to Subparagraph 4, Paragraph 1, Article 25 of the Patent Act, “animal and plant varieties” are not granted patent rights. However, intermediate materials produced during the process of plant breeding may be eligible for patent protection. Under the previous Guidelines, the scope of “plant varieties” was not precisely aligned with the definitions in the Seed Law and the Regulations on the Protection of New Plant Varieties, resulting in a lack of effective IP protection for intermediate breeding materials. The current amendments clarify and detail as follows.
1. Definition of “Plant Variety”
Section 4.4 (“Animal and Plant Varieties”) of Chapter 1, Part II of the amended Guidelines adds the definition of “plant variety,” i.e., “A plant variety as referred to in the Patent Act means a plant group that has been artificially bred or discovered and improved, with consistent morphological and biological characteristics and relatively stable genetic traits.” This provision is consistent with the relevant definition in the Seed Law, forming an effective connection between the patent system and the plant variety protection system, and avoiding gaps in IP protection for innovation in the seed industry.
2. Provisions on Wild Plants Naturally Existing as Scientific Discoveries
Section 9.1.2.3 (“Individuals and Components of Animals and Plants”) of Chapter 10, Part II of the amended Guidelines provides “Wild plants found in nature, which have not been technically processed and exist naturally, fall under the category of scientific discoveries as provided in Subparagraph 1, Paragraph 1, Article 25 of the Patent Act and cannot be granted patent rights. However, when wild plants have been artificially bred or improved and have industrial utility, such plants themselves do not fall within the scope of scientific discoveries.” This provision clarifies that wild plants that have not undergone artificial breeding or improvement and have not involved human technical intervention are scientific discoveries and not patentable subject matter.
3. Principles for Determining “Plant Variety”
Section 9.1.2.3 (“Individuals and Components of Animals and Plants”) of Chapter 10, Part II of the amended Guidelines provides “According to the definition of ‘plant variety’ in Section 4.4 of Chapter 1 of this Part, plants and their propagating materials obtained by artificial breeding or by improving discovered wild plants, if lacking consistent morphological and biological characteristics or relatively stable genetic traits in their population, cannot be considered ‘plant varieties’ and therefore do not fall within the scope of Subparagraph 4 Paragraph 1 Article 25 of the Patent Act.” This provision clarifies the principles for determining “plant variety.”
In other words, to determine whether the subject matter for which protection is sought is a “plant variety,” a substantive assessment must be made based on the technical solution defined in the claims and the disclosure in the application documents, mainly ascertaining whether the plant or propagating material thereof for which protection is sought has consistency and stability of main traits in the population, as follows.
Consistency: Other than for predictable natural variation, the relevant features or characteristics of individuals within a plant population are consistent.
Stability: After repeated propagation or at the end of a specific propagation cycle, the main traits of a plant population remain unchanged.
In examination practice, the determination of “plant variety” may be considered on a case-by-case basis.
4. Determination of Transgenic Plants Constituting “Plant Varieties”
Section 9.1.2.4 (“Transgenic Animals and Plants”) of Chapter 10, Part II of the amended Guidelines amends the relevant content as “If it itself still falls within the scope of ‘animal variety’ or ‘plant variety’ as defined in Section 4.4 of Chapter 1 of this Part, it cannot be granted patent rights according to Subparagraph 4 Paragraph 1 Article 25 of the Patent Act.”
That is, the current amendment adds the word “if” to remind examiners and applicants to distinguish between different situations, because under the amended Guidelines, transgenic plants are considered plant varieties only if they have “consistent morphological and biological characteristics and relatively stable genetic traits in their population.”
VI. Amendments to Provisions on Reexamination and Invalidation Proceedings
Amendments to the Guidelines regarding reexamination and invalidation proceedings mainly include (a) composition of examination decisions, (b) principles of double jeopardy in invalidation proceedings, (3) qualification of invalidation petitioners, and (4) submission of amended content in invalidation proceedings, with the main points as follows.
1. Composition of Examination Decisions
Section 6.2 of Chapter 1, Part IV of the amended Guidelines changes “Examination decisions include the following parts” to “Examination decisions generally include the following contents,” and deletes “For reexamination decisions revoking rejection decisions, the cause of action part may be simplified or omitted.” This amendment is mainly to optimize and adjust the drafting of examination decisions, so that examiners can focus on resolving substantive disputes while ensuring the normative content of decisions, thereby improving the quality and efficiency of examination.
2. Principle of Double Jeopardy
The principle of double jeopardy is an important adjudication principle in invalidation proceedings. When there are multiple invalidation petitions for the same patent rights, this principle avoids contradictory invalidation decisions, maintains the res judicata effect of invalidation decisions, restricts the parties’ right to litigate, avoids unnecessary defense burdens for the patentee, and prevents waste of administrative resources.
The amendments to the Guidelines change “the same grounds and evidence” in Sections 2.1 and 3.3 of Chapter 3, Part IV to “identical or substantially identical grounds and evidence,” more clearly reflecting the broad consensus in the industry and guiding petitioners to file invalidation petitions lawfully and reasonably, while avoiding unnecessary litigation burdens for patentees and improving the overall quality and efficiency of adjudication.
3. Qualification of Invalidation Petitioners
Article 45 of the Patent Act provides that any person may file an invalidation petition against a patent. Since Article 45 states “any person” may file an invalidation petition against a patent, in practice, there have been cases where invalidation petitions are filed in the name of another person (i.e. “straw man” petitions). If the invalidation petition is not filed based on the true intention of the “petitioner,” it may even involve submitting forged signatures or forged authorization documents. Such conduct, which does not comply with the principle of good faith, may not only be unfair to the patentee of the disputed patent, but may also undermine the credibility of the patent invalidation system and market competition order. Based on our experience in patent disputes, when such disputes arise or are anticipated between competitors, the party intending to file an invalidation petition may use a third party (i.e., a straw man) to file the invalidation proceeding in order to conceal its identity. In the past, the CNIPA did not proactively investigate whether the filing of an invalidation proceeding in the name of a straw man complied with the principle of good faith.
To regulate bad faith invalidation petitions, Section 3.2 (“Qualification of Invalidation Petitioners”) of Chapter 3, Part IV of the amended Guidelines clearly provides that, if the invalidation petition is not filed based on the true intention of the petitioner, it will not be accepted. As for determination of whether the “petitioner” has filed the invalidation proceeding based on true intention, the CNIPA has not yet officially announced specific criteria.
After the implementation of the amended Guidelines, when an invalidation proceeding is filed, the patentee is likely to challenge whether the petitioner has filed the invalidation proceeding with the CNIPA based on true intention. At that time, the CNIPA will initiate relevant investigations as appropriate, and the parties under investigation may include the third party and patent agency thereof, etc. The patentee may also be required to adduce evidence for its claims. The specific implementation standards for this new provision remain to be monitored in practice.
4. Submission of Amended Content in Invalidation Proceedings
In invalidation proceedings, the patentee may amend the claims, sometimes involving multiple amendments. The previous Guidelines did not provide for the submission of amended content, and in practice, parties and panels have long been troubled by this issue. To clarify the submission of amended content in invalidation proceedings, the amended Guidelines add Section 4.6 (“4.6.4 Submission of Amended Content”) to Chapter 3, Part IV, providing that “where the patentee amends the claims, the patentee shall submit a full replacement page and an amendment comparison table,” and “if the patentee submits multiple amended contents in the same invalidation proceeding, all of which comply with Section 4.6.3 of this chapter, the last submitted amended content shall prevail, and the others shall not be used as the basis for examination.” This amendment enables both parties to have a clear expectation regarding the examination content and effectively improves the efficiency of case adjudication.
VII. Provisions on Preliminary Examination and Related Procedures
The amendments to the Guidelines regarding preliminary examination and related procedures involve Chapter 1 of Part I “Preliminary Examination of Invention Patent Applications”, Chapter 1 of Part III “Preliminary Examination and Transaction Processing of International Applications Entering the National Phase”, and Part V “Patent Applications and Transaction Processing.” The noted amendments involve three main topics, highlighted as follows.
1. Provisions on Preliminary Examination of Invention Patent Applications
(1) On the Completion of Inventor Information in the Request and the Obligations of Agencies
Section 4.1.2 (on “Inventors”) of Chapter 1, Part I of the amended Guidelines requires that:
a. False inventors must not be listed,
b. Examiners generally do not examine whether the inventors listed in the request comply with this provision, except where there is evidence that the inventors listed in the request do not comply with this provision”, and
c. Inventors must be individuals (i.e., natural persons) (i.e., AI or virtual inventors are not permitted), and “the request must include the identity information of all inventors, and the information must be true.”
The CNIPA held a “Special Seminar on the Amendment of the Guidelines” on December 10, 2025, and stated that, following implementation of the amended Guidelines, regardless of whether the inventors are of Chinese or other nationality, applicants must correctly and completely submit the identity information of all inventors when filing a patent application, including the inventor’s Chinese name, nationality, and identification number (e.g., Chinese inventor’s ID number, or the identification number accepted in the inventor’s home country for foreign inventors). According to our telephone communication with relevant CNIPA examiners, if the noted inventor information is not fully provided at the time of filing, the CNIPA may require the applicant to supplement the information within a specified period by way of correction.
(2) On Priority Claims in Divisional Applications
Sections 6.2.1.2 and 6.2.2.2 (“Priority Claims”) of Chapter 1, Part I of the amended Guidelines notes that “If the original application of a divisional application claims priority, but the applicant does not declare the priority claim in the request when filing the divisional application, the divisional application shall be deemed not to claim such priority, and the examiner shall issue a notice of deemed non-claim of priority.” According to this provision, if a divisional application is considered to not claim priority due to the omission of priority information, the examiner shall issue a notice of deemed non-claim of priority, and under current practice, the applicant may request restoration of the priority claim through a restoration procedure.
2. Provisions on Examination of International Applications Entering the National Phase
(1) On Signature Requirements for Priority Assignment Certificates
Section 5.2.3.2 (“Provision of Proof of Entitlement to Priority”) of Chapter 1, Part III of the amended Guidelines changes “assignor” to “all applicants of the earlier application,” making the provision clearer, more legally compliant, and consistent with other parts of the Guidelines.
(2) On Calculation Rules for Sequence Listing Additional Fees
According to Section 7.3 (“Other Special Fees”) of Chapter 1, Part III and Section 1 of Chapter 2, Part V of the amended Guidelines, the calculation rules for additional fees for sequence listings exceeding 400 pages have been amended, deleting the previous provision (“if the nucleotide and/or amino acid sequence listing as a separate part of the specification exceeds 400 pages, the sequence listing shall be calculated as 400 pages”), and clearly stating that “for sequence listings submitted in computer-readable format in accordance with the prescribed format, the number of pages shall not be calculated.” This amendment will reduce the additional fees for patent applications in the biological field involving sequence listings, and align the fee calculation rules for national applications and international applications entering the national phase, as well as harmonize with international practices regarding sequence listing fees. However, for national applications submitted in paper form, the additional fee is still calculated based on the number of pages of the paper sequence listing.
3. Provisions on Patent Applications and Transaction Processing
(1) Refund Situations
The previous Guidelines provide two manners of refund, namely, "circumstances in which the Patent Office proactively refunds" and "circumstances in which parties may request a refund." To ensure the accuracy and timeliness of refunds, the amended Guidelines only includes the circumstances in which parties may request a refund. That is, all refunds must be proactively requested by the parties. .
The amended Guidelines specify that for divisional applications, the applicant may request a refund, i.e., for divisional applications deemed not to have been filed, before the Patent Office issues a notice of entry into substantive examination for the invention patent application, the party may request a refund of the substantive examination fee already paid.
(2) Order of Examination
Section 8.1 (“General Principles of the Order of Examination”) of Chapter 7, Part V of the amended Guidelines adds “Upon the applicant’s request, patent applications may be examined as needed, including prioritized examination, fast-track examination, or delayed examination”, while at the same time, Section 8.3 “Fast-Track Examination” is added, and it is clarified that “for patent applications that have passed pre-examination by a national-level IP protection center or fast-track rights protection center and meet the relevant requirements for fast-track examination, fast-track examination may be conducted.” These provisions are intended to align with current practice and further reflect the principle of “examination as fast or as slow as needed, combining speed and flexibility, and adapting to demand.”
(3) Patent Term Adjustment
Regarding patent term adjustment, Section 2.2.1 of Chapter 9, Part V of the amended Guidelines provides the following.
“Delays caused by the ‘reexamination procedure revoking a rejection decision based on new reason(s) stated or new evidence submitted by the reexamination petitioner’ fall under the reasonable delay provided in Subparagraph 3 Paragraph 3 Article 78 of the Implementing Regulations (i.e., no adjustment for this part of the period).”
The rationale is that, in the reexamination procedure, even if not amending the application documents, the applicant may still attempt to overcome the defects identified in the rejection decision by “stating opinions” or “submitting evidence.” However, if such opinions or evidence involve any matters not previously raised in the substantive examination procedure, and the reexamination decision revoking the rejection is based on such opinions or evidence, the resulting delay is considered a reasonable delay in the grant process and should not be subject to patent term adjustment.
Since the CNIPA has not yet disclosed the specific implementation standards in this regard, determination of “new reasons” in practice remains to be confirmed.
(4) Other Amendments
To make the wording more precise and consistent with the Civil Code, the amended Guidelines change “expiration date of the patent right” to “termination date of the patent rights,” and “assignor” to “licensor” and “assignee” to “licensee” in the context of effectiveness, modification, and cancellation of the recording of patent license contracts.
In addition, to clarify the content of the patent certificate, the amended Guidelines add the following explanation regarding the “composition of the patent certificate”: “For international applications or divisional applications, the names of the inventors or designers and the names of the applicants as recorded in the patent certificate at the time of filing refer to the names of the inventors or designers and the names of the applicants at the time the international application enters the Chinese national phase or at the time the divisional application is filed.”
We will continue to monitor the specific implementation standards of the amended Guidelines and share updates with clients and readers in a timely manner.
Should you or your company have any questions regarding the foregoing, please do not hesitate to contact us for further clarification.