Frequently Asked Questions on Invention or Utility Model Priority

Author of this article: Lv Guofang, China Process and Information Department

During the preparation or application process of a patent application, there are inevitably some questions about priority. Can the case enjoy priority? How to enjoy priority? Does it belong to foreign priority or domestic priority? Recently, the State Intellectual Property Administration has provided answers to common questions regarding the priority of inventions or utility models. Let’s take a look together.

1、 The circumstances and knowledge points in which the applicant requests priority based on a previously filed PCT international application:

1. The applicant’s request for priority based on a previously filed PCT international application is considered a foreign priority;

2. The applicant shall reapply for a patent on the same subject matter to China within 12 months from the date of the first PCT international application;

3. If the applicant requests priority, they should declare in the request form at the same time as submitting the application, stating the application date, application number, and original receiving institution of the earlier application (uniformly fill in the International Bureau IB);

If the applicant requests priority, they shall pay a priority fee of 80 yuan per item within 2 months from the date of filing the application;

5. The applicant shall submit a copy of the prior application documents within 16 months from the date of the first filing of the PCT international application. If there is a discrepancy between the prior and subsequent applicants, a priority transfer certificate shall also be submitted;

Additional precautions:

a) If the applicant fails to submit an application within the 12-month priority period, they may request the restoration of priority within 2 months from the expiration of the period, that is, the deadline for submitting the application can be extended to 14 months, but an additional restoration fee of 1000 yuan must be paid;

b) If the PCT international application filed earlier needs to enter the Chinese national phase later, the examiner will conduct an examination to avoid duplicate authorization, and there may be a risk of rejection of the PCT international application.

2、 When the prior application that serves as the basis for claiming priority is a national application filed in China, how does the State Intellectual Property Office handle the international application that serves as the receiving office, international search unit, and designated office of the later application during the examination, international search, and Chinese national stages?

During the acceptance and examination stage, the priority claim in the request for examination shall be checked to ensure that it correctly includes the date of submission of the prior application, the prior application number, the name of the country where the prior application was filed, and the priority period shall be examined. The examination status of the prior application shall not be examined.

In the international search stage, as long as the content of the prior application is sufficient to determine the filing date, regardless of the final outcome after the prior application (such as whether a patent right has been granted), it can be used to establish the priority date.

3. In the Chinese national stage, the priority claim shall be reviewed in accordance with the relevant provisions of the country’s priority rights. Based on the international filing date of the international application, if it is found that a notice of granting patent rights and a notice of handling registration procedures have been issued for the prior application and the applicant has already completed the registration procedures, the international application shall be deemed not to have claimed priority. If the prior application has not been granted a patent right or if a patent right has been granted after the international application date, an examination to avoid duplicate authorization is required.

give an example:

A Shenzhen company wishes to request that Chinese patent application case A be used as the basis for priority (priority date is 2023/8/10) to submit international patent application case B to the Chinese receiving office on August 5, 2024, and correctly fill in the priority number and priority date. The original receiving institution has received the notification of patent grant and registration procedures for priority case A on July 31, 2024, and has completed the payment and certification procedures.

a) The international application case B is proceeding normally during the acceptance and examination stage as well as the international search stage, and is not affected;

b) If the subsequent international application case B needs to enter China, then in the Chinese national phase, the international application will be considered as not claiming priority and the priority cannot be restored;

c) If priority case A fails to complete the payment and certification procedures before August 5, 2024, the examiner will conduct a review to avoid duplicate authorization when the international application enters China, and there may be a risk of rejection of the international application.

3、 If the original application has priority, how should the divisional application based on the original application be processed to enjoy the priority?

The applicant shall declare in the patent request for divisional application the priority of the original application, correctly fill in the priority number, priority date, and the original accepting institution, and pay the priority claim fee within 2 months from the date of divisional application.

Additional precautions:

a) The priority period for divisional applications is not limited to 12 months, as long as the submission time of the divisional application meets the requirements;

b) If the applicant, when filing a divisional application, fails to declare in the patent request that the priority right of the original application is claimed, or fills in the priority information incorrectly or incorrectly, or fails to pay the priority claim fee, if they wish to continue to enjoy the priority right of the original application, they should promptly request the restoration of the claimed priority right.

The State Intellectual Property Office has also published answers to common questions about priority in the patent business processing system column. Attached is a link for reference and interpretation: https://www.cnipa.gov.cn/art/2024/8/1/art_3133_194051.html