绿洲慧写 | AI 辅助专利撰写专家

Supplementing Application Documents by Citing Prior Applications

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

1 Supplementing Missing Claims or Description by Citing Prior Applications

If the applicant, according to the provisions of Article 45 of the implementing regulations of the Patent Law, supplements the missing claims or description by citing a prior application, they must claim the priority of the prior application at the time of first filing the patent application and make a statement of incorporation by reference. Using the standard patent application form of the Patent Office that includes a statement of incorporation by reference is considered as making such a statement. The applicant should also submit a confirmation of the statement of incorporation by reference and the relevant documents within two months from the date of first filing the patent application or within a period specified by the Patent Office. During the preliminary examination, examiners should review the following:

(1) The application number of the prior application stated in the confirmation of the statement of incorporation by reference should be consistent with the one filled in the request form, and it should be indicated where the content of the supplemented application documents can be found in the copy (or its Chinese translation if the copy is in a foreign language) of the prior application.

(2) The content of the supplemented application documents should be included in the copy and the Chinese translation of the prior application.

(3) For foreign priority claims, the original copy of the prior application issued by the original accepting institution and its Chinese translation should be submitted; for domestic priority claims, if the prior application number and application date are indicated, it is considered that the copy of the prior application has been submitted.

(4) The priority involved in the statement of incorporation by reference should comply with Article 29 of the Patent Law, Articles 34 and 35 of the implementing regulations, as well as Sections 6.2.1, 6.2.2, and 6.2.5 of Chapter 1 of Part 1 of this Guide; situations specified in Articles 36 and 37 of the implementing regulations do not apply to the provisions of Article 45 of the implementing regulations.

If the confirmation does not comply with items (1) or (3), examiners should issue a correction notification for procedures. If not responded to or still not compliant after correction, examiners should issue a notice of withdrawal of acceptance of the patent application, treating the statement of incorporation by reference as not made, and close the case. If not compliant with item (4), examiners should issue a notice of withdrawal of acceptance of the patent application. If not compliant with item (2), examiners should issue a correction notification for procedures. If not responded to, examiners should issue a notice of withdrawal of acceptance of the patent application; if the content of the supplemented application documents after correction is still not included in the copy or the Chinese translation of the prior application, and if it complies with items (1), (3), and (4), examiners should issue a notice of re-determination of the application date, with the date of submission of the claims or description as the application date.

2 Supplementing Erroneously Submitted Claims, Description, or Missing or Erroneously Submitted Parts of Claims or Description by Citing Prior Applications

According to Article 45 of the implementing regulations of the Patent Law, if the patent application lacks parts of the claims or description, or erroneously submits the claims or description or parts thereof, the missing or correct parts can be supplemented by citing prior applications while retaining the application date.

If the applicant claims the priority of a prior application on the filing date and requests to supplement the claims, description, or parts thereof by citing prior applications, they should make a statement of incorporation by reference when first filing the patent application. Using the standard patent application form of the Patent Office that includes a statement of incorporation by reference is considered as making such a statement. The applicant should also submit a confirmation of the statement of incorporation by reference and the relevant documents within two months from the patent application filing date or within a period specified by the Patent Office. For patent applications that receive a correction notification indicating formal defects in the application documents, the applicant can submit a confirmation of the statement of incorporation by reference within the specified deadline to remedy the defects by citing prior applications. If no priority was claimed on the filing date or if the statement of incorporation by reference and its confirmation were not submitted within the specified period, examiners should issue a notification treating the statement of incorporation by reference as not made.

The process of supplementing application documents by citing prior applications must also meet the following requirements:

(1) The confirmation of the statement of incorporation by reference should clearly state the application number of the cited prior application and indicate the location of the supplemented application documents’ content in the copy (or its Chinese translation if the copy is in a foreign language) of the prior application.

(2) Submission of modified replacement pages for the application documents.

(3) The content of the supplemented application documents should be included in the copy and the Chinese translation of the prior application.

(4) For claims of foreign priority, the original copy of the prior application issued by the original accepting institution and its Chinese translation should be submitted. For domestic priority claims, with the prior application number and application date specified, it is considered that the copy of the prior application has been submitted.

(5) The priority involved in the statement of incorporation by reference should comply with Article 29 of the Patent Law, Articles 34 and 35 of the implementing regulations, as well as Sections 6.2.1, 6.2.2, and 6.2.5 of Chapter 1 of Part 1 of this Guide; situations specified in Articles 36 and 37 of the implementing regulations do not apply to the provisions of Article 45 of the implementing regulations.

If non-compliance with items (1), (2), or (4) is identified, examiners should issue a correction notification for procedures. If not responded to or still not compliant after correction, examiners should issue a notification treating the statement of incorporation by reference as not made. If not compliant with item (5), examiners should issue a similar notification. If not compliant with item (3), examiners should issue a correction notification for procedures. If not responded to, examiners should issue a notification treating the statement of incorporation by reference as not made; if after correction, the content of the supplemented application documents is still not included in the copy or the Chinese translation of the prior application, but complies with items (1), (2), (4), and (5), examiners should issue a notice of re-determination of the application date, with the date of submission of the claims, description, or parts thereof as the application date.

3 Exclusions to Citing Prior Applications for Incorporation

Divisional applications do not apply to the provisions of Article 45 of the implementing regulations of the Patent Law. Article 6, Paragraph 2 of the implementing regulations does not apply to delays in meeting the deadlines specified in Article 45 of the implementing regulations.

4 Payment of Additional Fees If the applicant submits additional application documents, examiners should verify the additional fees required. If additional payment is needed, a notification for payment of fees should be issued. The applicant should pay the relevant fees within two months from the application date or one month from receiving the notification. If the fees are not paid or not fully paid within the deadline, the application is considered withdrawn, and the examiner should issue a notification of withdrawal.