绿洲慧写 | AI 辅助专利撰写专家

Claiming Priority-Claiming Foreign Priority

From Part I: Preliminary Examination Chapter 1: Preliminary Examination of Invention Patent Applications

Claiming priority refers to the applicant requesting the patent office to acknowledge the priority based on an earlier patent application, as per Article 29 of the Patent Law. The applicant’s claim for priority must comply with Articles 29, 30 of the Patent Law, Articles 34, 35, 36, 37 of the Implementing Regulations of the Patent Law, and relevant provisions of the Paris Convention.

If an applicant submits an application in China within twelve months of the first patent application for the same subject matter of an invention or utility model, or within six months of the first patent application for the same subject matter of a design in a foreign country, they may enjoy priority based on an agreement between that country and China, their participation in an international treaty, or the principle of mutual recognition of priority. This is known as foreign priority.

1 Earlier Application and Subsequent Application Claiming Priority

When an applicant submits a patent application to the patent office and claims foreign priority, the examiner must verify whether the earlier application used as the basis for claiming priority was filed in a member country of the Paris Convention or is a valid regional or international application in that member country. For applications claiming priority from non-Paris Convention member countries, it should be checked whether that country recognizes China’s priority rights. The examiner should also verify whether the applicant is entitled to the rights provided under the Paris Convention, i.e., whether the applicant is a national or resident of a Paris Convention member country or a country that recognizes China’s priority rights.

The examiner should also check whether the subsequent application claiming priority was filed within the prescribed period; if not, a notification should be issued considering the priority claim as not made. If there are multiple earlier applications, the period is calculated from the application date of the earliest earlier application. For any priority claims beyond the prescribed period, a notification should be issued considering the priority claim as not made, except in cases where restoration of priority is requested according to Section 6.2.6.2 of this chapter.

During preliminary examination, whether the earlier application is the first application as defined by the Paris Convention and whether the subject matter of the earlier and subsequent applications are substantially the same are not examined, unless the first application obviously does not comply with the relevant provisions of the Paris Convention or the subjects of the earlier and subsequent applications are clearly unrelated.

The earlier application can be one requesting a certificate of inventorship as defined in Article 4 of the Paris Convention.

2 Declaration of Claim for Priority

When an applicant claims priority, they must declare it in the request at the time of filing the patent application; failure to declare in the request is considered as not claiming priority.

In the declaration of claim for priority, the applicant should state the application date, application number, and the name of the original receiving office of the earlier application used as the basis for priority. If the application date, application number, and the name of the original receiving office of the earlier application are not stated or incorrectly stated, but the applicant has submitted a copy of the earlier application within the prescribed period, the examiner should issue a notification to correct procedures. If there is no response or the correction still does not comply after the period, a notification should be issued considering the priority claim as not made.

If multiple priorities are claimed and one or more of the earlier applications’ application date, application number, and the name of the original receiving office are not stated or incorrectly stated, but the applicant has submitted a copy of that earlier application within the prescribed period, the examiner should issue a notification to correct procedures. If there is no response or the correction still does not comply after the period, the specific priority claim is considered not made, and a notification should be issued considering the priority claim as not made.

3 Copy of the Earlier Application

A copy of the earlier application, serving as the basis for the priority claim, should be issued by the original receiving office of the earlier application. The format of the earlier application’s copy should comply with international norms and at least indicate the original receiving office, applicant, application date, and application number. If it does not meet these requirements, the examiner should issue a notification for procedural correction. If there is no response or the correction still does not comply after the period, it is considered that the copy of the earlier application was not submitted, and the examiner should issue a notification considering the priority claim as not made.

For multiple priority claims, all copies of the earlier applications must be submitted. If any of the copies do not meet the requirements, the examiner should issue a notification for procedural correction. If there is no response or the correction still does not comply after the period, it is considered that the specific earlier application’s copy was not submitted, and the examiner should issue a notification considering the corresponding priority claim as not made.

The copy of the earlier application should be submitted within sixteen months from the priority date (for multiple priorities, counted from the earliest priority date). If not submitted within this period, the examiner should issue a notification considering the priority claim as not made.

If the Patent Office obtains a copy of the earlier application electronically or through other means from the original receiving office, in accordance with an agreement between the State Intellectual Property Office and the original receiving office, it is considered that the applicant has submitted a certified copy of the earlier application.

If a copy of the earlier application has already been submitted to the Patent Office and needs to be resubmitted, the applicant may submit only the Chinese translation of the bibliographic data of the copy, indicating the application number of the original file where the copy of the earlier application is located.

According to the provisions of the first paragraph of Article 18 of the Patent Law, if an applicant engages an agency, they may submit the copy of the earlier application themselves.

4 Applicant of the Subsequent Application

The applicant of the subsequent application claiming priority should be consistent with, or one of, the applicants recorded in the copy of the earlier application.

If the applicants are entirely different, and the priority right was transferred from the applicant of the earlier application to the applicant of the subsequent application, a priority right transfer document signed or stamped by all applicants of the earlier application must be submitted within sixteen months from the priority date (for multiple priorities, counted from the earliest priority date). If the earlier application has multiple applicants, and the subsequent application has different applicants, a transfer document signed or stamped by all applicants of the earlier application transferring the priority right to all applicants of the subsequent application can be submitted. Alternatively, separate transfer documents for each applicant of the earlier application transferring the priority right to the applicants of the subsequent application can be submitted.

If the applicant fails to submit the priority right transfer document within the period, or the submitted document does not comply with the requirements, the examiner should issue a notification considering the priority claim as not made.