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Examination Procedure of Utility Model Patent Applications

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

1 Notification of Grant of Patent Right

If no reasons for rejection are found during the preliminary examination of a utility model patent application, the examiner should issue a notification granting the utility model patent right. Utility model patent applications eligible for patent rights include those that meet the requirements of the preliminary examination without needing correction, as well as those that meet the requirements after correction.

The notification of grant of patent right should, in addition to the recipient’s information and bibliographic data, specify the text on which the grant is based and the name of the utility model. If the examiner has made amendments ex officio, the content of these amendments should also be stated.

2 Correction of Application Documents

During the preliminary examination, for patent applications with defects in the application documents that can be overcome by correction, the examiner should conduct a comprehensive examination and issue a correction notice. The correction notice should include, in addition to the recipient’s information and bibliographic data, the following content:

(1) Specify which documents submitted by the applicant at what time are being addressed by the correction notice.

(2) Clearly and specifically point out the defects in the application documents, and indicate the relevant articles of the Patent Law and its Detailed Rules which are not met.

(3) Clearly and specifically explain the examiner’s tentative opinions and possible suggestions, so that the applicant can understand the examiner’s intentions.

(4) Specify the deadline for the applicant to respond to the correction notice.

(5) Advise the applicant on the types of documents to be submitted for correction.

3 Handling of Obvious Substantive Defects

During the preliminary examination, if the examiner considers that the application documents have obvious substantive defects that cannot be overcome by correction, a notification of examination opinion should be issued. The notification of examination opinion should include, in addition to the recipient’s information and bibliographic data, the following content:

(1) Specify which documents submitted by the applicant at what time are being addressed by the examination opinion notice.

(2) Clearly and specifically point out the defects in the application documents, indicate the relevant articles of the Patent Law and its Detailed Rules which are not met, and analyze the facts of the obvious substantive defects in the application documents, if necessary, in conjunction with relevant evidence.

(3) State the examiner’s tentative opinion to prepare for the rejection of the patent application based on the relevant provisions of the Patent Law and its Detailed Rules.

(4) Specify the deadline for the applicant to respond to the examination opinion notice.

4 Response to Notification

Upon receiving a correction notice or an examination opinion notice, the applicant should correct or state their opinions within the specified period. If the applicant corrects the patent application, a correction letter and corresponding modified pages should be submitted. The modifications should specifically address the defects pointed out in the notice and must not exceed the scope of the description and claims submitted on the application date.

If the applicant fails to respond within the deadline, the examiner should issue a deemed withdrawal notice or other notifications, as appropriate. If the applicant has a legitimate reason for being unable to respond within the specified period, a request for an extension may be filed. The handling of such extension requests is governed by Section 7, Chapter 4 of Part Five of this guideline.

For patent applications deemed withdrawn due to force majeure or other legitimate reasons, the applicant may request the restoration of rights within the specified period. The handling of requests for restoration of rights is governed by Section 7, Chapter 6 of Part Five of this guideline.

5 Rejection of the Application

5.1 Conditions for Rejection

If the application documents have obvious substantive defects that the examiner believes cannot be overcome by correction, and the applicant fails to provide convincing opinions, statements, and/or evidence, or fails to modify the defects pointed out in the notice within the specified period, the examiner may decide to reject the application. If modifications are made in response to the notice, even if the pointed-out defects still exist, the applicant should be given another opportunity to state opinions and/or modify the documents. If subsequent modifications still involve similar defects and the modified application documents still have the notified defects, the examiner may decide to reject the application.

If the application documents have defects that can be overcome by correction, and the examiner has issued two correction notices for such defects, and the applicant’s statements or corrections still do not eliminate the defects within the specified period, the examiner may decide to reject the application.

5.2 Text of the Rejection Decision

The text of the rejection decision includes three parts: the cause of action, the reasons for rejection, and the decision.

(1) In the cause of action, the text being rejected should be specified, and the examination process of the rejected application should be briefly described.

(2) In the reasons for rejection, the facts, reasons, and evidence on which the rejection decision is based should be detailed, paying attention to the following requirements:

(i) Correctly select legal provisions. When a patent application can be rejected based on different provisions of the Patent Law and its Detailed Rules, the most appropriate and dominant provision should be chosen as the main legal basis for rejection. Other substantive defects in the application should be briefly pointed out. The legal basis for rejection should be included in the provisions listed in Article 50 of the Detailed Rules for the Implementation of the Patent Law.

(ii) Base the rejection on convincing facts, reasons, and evidence, and ensure that these have been properly heard in accordance

with the conditions for rejection.

(iii) If the application is rejected after multiple corrections still leaving defects, it should be clearly stated that two or more correction notices have been issued for the defect, and that the final corrected documents still contain the defect.

(iv) If the application is rejected based on Paragraph 3 of Article 2, Articles 5, 9, Paragraph 1 of Article 19, Article 22, Article 25, Paragraphs 3 or 4 of Article 26, Paragraph 1 of Article 31, Article 33 of the Patent Law, or Article 11, Article 23, Paragraph 1 of Article 49 of the Detailed Rules for the Implementation of the Patent Law, an analysis of the obvious substantive defects in the application documents should be provided.

In the reasons for rejection, the examiner should also briefly comment on the applicant’s arguments.

(3) In the decision part, it should be clearly stated that the patent application does not comply with the corresponding provisions of the Patent Law and its Detailed Rules, and a conclusion should be made to reject the patent application based on Paragraph 2 of Article 50 of the Detailed Rules for the Implementation of the Patent Law.

6 Handling of Preliminary Examinations and Review

If a patent application is rejected for non-compliance with the provisions of the Patent Law and its Detailed Rules, the applicant may file a request for review within the specified period. The preliminary examination and handling of the review request should refer to Section 8 of Chapter 2, Part Two of this guideline.