This section addresses the special issues and regulations for international applications (hereinafter referred to as “international applications”) seeking utility model patent protection in the national phase. Issues common to national applications apply the other provisions of this chapter.
1 Confirmation of the Examination Basis Text
1.1 Applicant’s Request
When entering the national phase, the applicant of an international application needs to confirm in the written declaration for entering the national phase (hereinafter referred to as “entry declaration”) the text they wish the Patent Office to base its examination on.
1.2 Text Basis for Examination
The text basis for examination might include:
(1) For international applications published in Chinese, the original international application; for those published in a foreign language, the Chinese translation of the original international application.
(2) For international applications published in Chinese, amendments to the claims submitted under Article 19 of the Patent Cooperation Treaty (PCT); for those published in a foreign language, the Chinese translation of the amended claims submitted under PCT Article 19.
(3) For international applications published in Chinese, amendments to the claims, specification, and drawings submitted under PCT Article 34; for those published in a foreign language,
the Chinese translations of the amended claims, specification, and drawings submitted under PCT Article 34.
(4) Correction texts submitted according to Article 50 and/or Article 121 of the Implementing Regulations of the Patent Law.
(5) Amendment texts submitted according to Article 130, Paragraph 1 of the Implementing Regulations of the Patent Law.
According to PCT Articles 28 or 41, the deadline for the applicant to submit amended claims, specifications, and drawings should comply with Article 130, Paragraph 1 of the Implementing Regulations of the Patent Law.
The text that forms the basis for examination is determined as specified in the examination basis declaration, which includes: indications made in the entry declaration when entering the national phase, and supplementary indications made within the specified period after entering the national phase in the form of a supplementary declaration. The latter supplements and corrects the former.
If the applicant indicates in the entry declaration that the application documents include items or parts added by reference, the examiner should review whether the incorporation by reference complies with the regulations, applying the standards in Section 5.3, Chapter 1, Part Three of this guide. Items or parts added by reference are part of the originally submitted application documents.
For modification documents of the international phase not specified as the basis for examination when entering the national phase, or for which Chinese translations have not been submitted as required, they shall not form the basis for examination.
1.3 Legal Effect of the Original Submission of International Application Documents
For international applications published in a foreign language, the examination is conducted on the Chinese translation, generally without the need to verify the original text. However, the original submission of international application documents has legal effect and serves as the basis for amendments to the application documents.
For international applications, the “original specifications and claims” referred to in Article 33 of the Patent Law mean the specifications, claims, and drawings of the originally submitted international application, including items or parts incorporated by reference.
2 Examination Requirements
2.1 Examination of Application Documents
The examination of the form or content of application documents, except for the following items, applies the provisions of the Patent Law, its Implementing Regulations, and this guide:
(1) If the utility model name does not have redundant words, the examiner shall not request or ex officio modify the name for not complying with the word count regulations for names in Section 4.1.1, Chapter 1, Part One of this guide.
(2) If there are no redundant phrases, the examiner shall not request or ex officio modify the abstract for not complying with the word count regulations for abstracts in Article 26, Paragraph 2 of the Implementing Regulations of the Patent Law.
(3) The examiner shall not request or ex officio modify the specification for not complying with Article 20, Paragraphs 1 and 2 of the Implementing Regulations regarding the writing style, order, and subtitles of the specification.
2.2 Examination of Unity
During the examination, if the examiner finds that the application documents, which form the basis for examination, request protection for multiple utility models lacking unity, the following should be verified:
(1) Whether the multiple utility models lacking unity include inventions not subjected to international search or preliminary examination in the international phase.
(2) Whether the multiple utility models lacking unity include inventions the applicant indicated as abandoned in the international
phase (for example, inventions for which the applicant chose to limit certain claims and thereby abandoned in the international phase).
(3) Whether the conclusion of lack of unity made by the international authority for the inventions is correct in the cases mentioned in (1) or (2).
If the examiner determines that the conclusion made by the international authority is correct, they should issue a notification to pay a unity restoration fee, informing the applicant to pay the fee within two months. If the applicant fails to pay the full unity restoration fee within the prescribed period and does not delete the utility models lacking unity, the examiner should issue a notice of examination opinion, informing the applicant that the parts of the international application that were not internationally searched will be considered as withdrawn, and request the applicant to submit an amended text deleting these parts. The examiner will continue the examination with the text that has these parts deleted.
For utility models deleted by the applicant due to non-payment of the unity restoration fee, the applicant may not file a divisional application according to Article 133, Paragraph 2 and Article 48, Paragraph 1 of the Implementing Regulations of the Patent Law. Other than this situation, if the international application contains two or more utility models, the applicant may file a divisional application according to Article 133, Paragraph 1 of the Implementing Regulations.
If the international authority did not raise the issue of unity during the international search and preliminary examination phase, but the application actually has a defect of lack of unity, it should be handled according to the provisions in Section 9 of this chapter.
2.3 Priority Application Filed in China
If the international application entering the national phase claims priority of an earlier application filed in China, or of an earlier international application that has entered the national phase in China, it may lead to duplicate patent grants. The handling of potential duplicate grants should follow the provisions in Section 13 of this chapter.
It should be noted that if the priority claim is deemed not to have been made, the earlier application might become prior art that destroys the novelty of the international application or constitutes a conflicting application.
2.4 Correction of Translation Errors
According to Article 131 of the Implementing Regulations of the Patent Law, before the Patent Office prepares to announce the grant of the utility model patent right, if the applicant discovers errors in the Chinese translation of the submitted specification, claims, or drawings, they may request a correction. To correct translation errors, the applicant must submit a written request and pay the prescribed fee for correcting the translation.
绿洲慧写 | AI 辅助专利撰写专家 