What are the main procedures in patent examination
1. Substantial examination request
Only invention patent applications need to go through this procedure.
A request for substantive examination can be made at the same time as the application or after the application, but it should be made within 3 years from the date of application at the latest. If the reasons are not submitted within the time limit or are deemed not to have been submitted due to unsatisfactory procedures, the application will be deemed to have been withdrawn. When the Patent Office deems it necessary, it may conduct a substantive examination of an invention patent application on its own. If a request for substantive examination is made, a separate request for substantive examination shall be submitted.
A request for substantive examination will only take effect after payment of the substantive examination fee. However, if the Applicant fails to pay the substantive examination fee after submitting the request for substantive examination, the Patent Office will not immediately issue a notice that the request for substantive examination is not filed, but will wait for 3 years from the filing date. If the applicant has not paid the substantive examination fee or if the payment is not made in full, a notice will be issued stating that the application is deemed to have been withdrawn.
If the applicant submits a request for substantive examination and pays the substantive examination fee, the Patent Office will review the request for substantive examination. If the request does not meet the requirements, it will issue a substantive examination request as appropriate. The request for review shall be deemed as failure to submit a notice or correction notice, and the reasons for noncompliance shall be stated. If the applicant receives a notice of correction, he shall make corrections within the time limit specified by the examiner. If the applicant receives a request for substantive examination and is deemed to have not submitted a notice, he shall resubmit a new request for substantive examination that meets the requirements within 3 years from the date of application. If the request for substantive examination passes the examination, the Patent Office will publish it in the Patent Gazette. If no corrections are made upon expiration of the time limit or the corrections still do not meet the requirements, the Patent Office will issue a notice that a request for substantive examination has not been made and notify the applicant.
If the substantive examination request is qualified, before entering the substantive examination, the examiner will issue a notice of entering the substantive examination procedure to notify the applicant.
When submitting a request for substantive examination, the applicant shall submit a document before the filing date (requesting priority right beforebefore the priority date) references related to the invention. If an application for the invention patent has been filed in a foreign country, the Patent Office may require the applicant to submit, within a specified time limit, the information on the search conducted by that country for the purpose of examining the application or the information on the examination results; if the application is not submitted within the time limit without justifiable reasons, the application will be rejected. deemed withdrawn.
When submitting a request for substantive examination and within 3 months from the date of receipt of the notice from the Patent Office that the invention patent application has entered the substantive examination stage, the applicant You can proactively propose amendments to your invention patent application.
2. Reply to various notices from the Patent Office
In preliminary examination or substantive examination procedures , when the examiner discovers that the application has obvious defects, format defects, or substantive defects, he shall use the form of a correction notice or an examination opinion to notify the applicant to make corrections or modifications to the application within a specified time or to correct the defects pointed out by the examiner. Defect Statement Comments. The applicant must respond to this. If he fails to respond without justifiable reasons, the application will be deemed to have been withdrawn. Applicants should pay attention to the following points when responding:
(1) Comply with the response deadline. The consequences of late response and non-response are the same. Except for the first preliminary examination action notice of invention patent application, the reply period is 4 months. The reply period for other notices is generally 2 months. However, for particularly simple procedures or to speed up the procedure, the examiner may only give 1 months for response. The applicant should pay attention to the deadline specified by the examiner and calculate the last date of reply according to the date stamp stamped by the Patent Office in the upper right corner of the notice. The last date of reply = issuance date + 15 days + designated time limit; when calculating the time limit, applicants should pay attention to the relevant provisions of Article 6 of the Implementing Rules.
If the applicant is unable to reply on time for any reason within the time limit, he shall go through the procedures for extending the time limit before the expiration of the time limit.
(2) Respond to the questions raised in the examination opinion notice one by one. If the applicant fails to respond to a certain aspect or a certain review opinion, it may be deemed to have failed to respond on time, resulting in the application being deemed withdrawn. The reply can express agreement with the examiner's opinion and make corrections or modify the application in accordance with the examination opinion; it can also express disagreement with the examiner's opinion and defend it and state the applicant's opinions and reasons.
Defects in format or procedures can generally be eliminated through corrections; obvious defects are generally difficult to eliminate through corrections or modifications, and in most cases the only option is to determine whether they exist. Defend and state opinions regarding obvious defects, for example: inventions and creations that are not protected by patentsFor example, inventions and creations violate national laws and harm public interests; substantive defects are divided into two categories. Some defects can be eliminated through modification, such as defects in claim drafting and unity; some are difficult to modify, such as insufficient disclosure of the description. , defects in novelty, creativity and practicality.
(3) Any correction or modification to an invention or utility model patent application shall not exceed the scope recorded in the original description and claims. Modifications to a design patent application shall not exceed the scope stated in the original description and claims. It must not exceed the scope represented by the original image or photo. Otherwise, the application may be rejected.
(4) The reply should submit documents in the prescribed format. If a correction is made, there should be a supplementary letter, and if there is a revision or statement of opinions, there should be a statement of opinion. For supplementary and corrected content, in addition to filling out the supplementary and corrected information in the supplement and correction form, replacement pages should also be submitted. For example, if the examiner requires the second page of the specification to be reprinted in the notice of correction, the applicant should submit the supplement and correction and reprint the second page of the specification clearly. Fill in "Instructions" in the "File Name" column of the supplement, fill in "P, 2" in the "Page" column, fill in "Unclear" in the "Before Correction" column, fill in "Reprint" in the "After Correction" column ".
The replacement page should be attached to the back of the statement of opinion.
The applicant should choose whether to use a supplementary letter or a statement of opinion according to the examiner's requirements. Generally, a correction letter is used to correct formal issues or procedural issues, and a statement of opinion is used to amend the substantive content of the application. If the applicant disagrees with the examiner's opinion, a statement of opinion is used when making a defense.
3. Pay the application maintenance fee
This procedure is only required for invention patent applications.
If the invention patent application has not been granted a patent right for 2 years from the filing date, the applicant shall pay the application maintenance fee starting from the third year. The application maintenance fee for each year should be paid when the applicant goes through the registration procedures, excluding the year in which the patent right is granted; for applications where the patent right is not granted, there is no need to pay the application maintenance fee.
The year is calculated based on the filing date. For example: if the filing date of a certain application is 1988.5.12, then 1988.5.12 is the first year, 1989.5.12~1989.5.12 is the second year, and 1990.5.12~1991.5.12 is the third year. And so on. If the application has not been approved by May 12, 1990If the application is approved, the application maintenance fee shall be paid from the third year onwards.
If you apply for maintenance fees, you can request for an extension according to regulations.
4. Request for early announcement
Requesting for early announcement is an option that applicants can choose depending on the situation. Procedure, it only applies to invention patent applications.
The Patent Law stipulates that according to normal procedures, an invention patent application shall not be published until 18 months after the application date. After publication, the applicant can obtain the right to temporary protection, and the content of the application will become part of the existing technology. Applicants may request for early publication of their application due to the following considerations.
(1) In order to bring the invention to the market as soon as possible and find a suitable buyer, the content of the invention needs to be announced as early as possible.
(2) In order to prevent others from using the patented invention for free, it is necessary to obtain temporary protection as early as possible.
(3) Before submitting a request for substantive review, obtain as long a period of time as possible to listen to the opinions of the market and the public in order to decide whether to submit a request for substantive review.
(4) Prevent others from obtaining patents for similar inventions by requesting early publication of the contents of their invention patent applications.
Applicants requesting early publication should submit a "Declaration Requesting Early Publication" in duplicate, and indicate the application number, invention title and other necessary bibliographic items. A declaration requiring early publication must be signed and sealed by the applicant. If a patent agent is entrusted, the patent agency may sign and seal it. If multiple applicants have not appointed a patent agent, the applicant's representative may sign and seal the statement. The applicant cannot attach any conditions to the early announcement statement.
After passing the preliminary public declaration, the Patent Office will immediately enter the publication preparation process after the application documents pass the preliminary examination. If the applicant requests to cancel the early disclosure at this time, the applicant's request to cancel the early disclosure will be deemed to have not been made, and the application documents will be disclosed as usual.
5. Active modification and correction of application documents
Proactive modification and correction of application documents It is also a procedure that applicants can choose according to their needs.
ShenIf there are various defects in the application documents, the applicant can take the initiative to make corrections or make modifications within the time specified in the implementation rules. Correction mainly refers to correcting defects in the form or format of the application, or defects in the procedures. For example: if the original document does not use the unified form developed by the Patent Office, you can take the initiative to make corrections and submit qualified documents; if the original request is not signed, you can take the initiative to make corrections and submit a signed request; if the application is entrusted with a patent agency, if the application If the patent agency power of attorney is not submitted at the time, you can take the initiative to correct and submit the patent agency power of attorney.
Modification mainly refers to the modification of the application content. Utility model and design patent applications are only allowed to submit active amendments within 3 months from the filing date; invention patent applications are only allowed when a request for substantive examination is made and upon receipt of a notice from the Patent Office that the invention patent application has entered the substantive examination stage. Within 3 months from the date of application and when responding to the examiner's first examination opinion, the application documents can be modified on the initiative. If a voluntary amendment is submitted outside the above-mentioned time limit, the Patent Office will treat it as if it has not been submitted.
Amendments to the request must be made through special procedures for changing bibliographic items, and cannot be handled according to the procedures for active modification mentioned here.
Amendments to the claims shall be based on the description. The applicant may modify the preamble of the claim or the characteristic part to make it more accurately consistent with the content of the invention or more logical. In order to make the patent application comply with the requirement of unity or to strengthen protection, the applicant may also add or delete claims in the claims.
Generally speaking, modifications to the description are mainly limited to non-substantive parts, such as the title of the invention, background technology, technical field to which the invention belongs, drawing descriptions and abstracts wait. These parts can be modified based on the content of the substantive part of the description to make it more suitable for the subject matter of the invention and make it easier for the public and examiners to understand the invention. Modifications to the substantive parts of the description, that is, the purpose of the invention, technical solutions, effects and embodiments, are generally not allowed and can only be considered in very special circumstances. For example, if the purpose of the invention is obviously incompatible with the technical solution, the purpose of the invention can be appropriately modified based on the technical solution; if the application does not meet the requirements of unity, the description should be modified to make it meet the requirements of unity; when applying, only write The content in the claims is added to the description, etc.
Modifications to design pictures or photos are limited to outlining unclear lines, overlaying text that cannot be protected, or obvious errors and changes in views. Correct any inconsistencies.
Any active modification or supplementIt shall not exceed the scope recorded or expressed in the original application. Whether unsolicited revisions or corrections will be accepted is determined by the receiving examiner. Active revisions or corrections should be made in a statement of opinion or correction, stating the name, page number, location and reason for the modification or correction of the document; the modified part should be printed on a replacement page and attached to the back of the statement of opinion or correction.
6. Procedure for change of bibliographic items
Applicants can also choose the procedure for change of bibliographic items according to their needs. A formality.
The bibliographic items of a patent application include: application number, filing date, invention title, classification number, priority matters (including the application number and filing date of the prior application) and the country of application), applicant or patentee matters (including the name, nationality, address, postal code of the applicant or patentee), inventor name, patent agency matters (including the name, address, and Postal code, name of patent agent), contact information (including name, address, postal code) and representative, etc.
After the applicant files an application, the relevant personnel description items in the request letter (referring to the applicant or patentee matters, inventor’s name, patent agency matters, contact person When there is a change (matter, representative), the party concerned shall handle the application procedures for changes in the bibliographic items in accordance with regulations; when other bibliographic items change, the Patent Office shall make the changes ex officio according to the circumstances.
When going through the procedures for changing the bibliographic items, a declaration form for changing the bibliographic items should be submitted to the Patent Office, in which the items to be changed and the circumstances before and after the change should be filled in, including the inventors involved. If the applicant or patent agency changes, it is also necessary to attach supporting materials explaining the reasons for the change and pay the prescribed fees.
When multiple bibliographic items of a patent application are changed at the same time, only one declaration form is required; when the same bibliographic item of multiple patent applications is changed, Even if the contents of the change are exactly the same, separate application forms for change of bibliographic items should be submitted.
The handling fee for change of bibliographic items in the patent charging standards published by the Patent Office refers to the fee for each application for a change of bibliographic items for each patent application. The fee for changing bibliographic items shall be paid within one month from the date of request, unless otherwise provided. Failure to pay or not pay in full upon expiration shall be deemed as failure to apply for change of bibliographic items.
The specific requirements are as follows:
(1)Changing the name of an invention-creation
The name of an invention-creation is both part of the request and part of the description. Therefore, if you change the name of an invention-creation, in addition to submitting a declaration of change of the bibliographic item, you must also attach a statement of opinions explaining the reasons for the change. The change procedures can only be handled with the approval of the examiner.
(2) Changes in inventors and designers
Changes in inventors and designers There are two situations: one is the change of the name of the inventor or designer, which is only a nominal change and does not involve a change of rights. If the name of the inventor or designer is changed, in addition to submitting the application form for change of bibliographic items, a certificate of name change issued by the household registration department should also be attached. The other is the change of inventor or designer. Since invention rights cannot be transferred or inherited, changes in inventors (including increases or decreases in the number of inventors) are mainly due to improper filing by the applicant or disputes over the invention rights.
If the inventor needs to be changed due to improper declaration, the applicant shall go through the change procedures on his behalf. In addition to submitting a declaration of change of bibliographic items, a report on the improper declaration shall be attached. Detailed description and proof that should be corrected or circumstantial evidence from other inventors.
If there is a dispute over the invention right, the patent administration agency shall be requested for mediation or a lawsuit shall be filed in the People's Court. If the invention rights are returned after mediation by the patent management agency or a ruling by the People's Court, the legal inventor may request the Patent Office to handle changes to the bibliographic items based on a legally effective decision or judgment.
(3) Change of applicant (or patentee)
Applicant (or patentee) There are mainly five situations in which there are changes to the right holder:
①Change of the applicant’s name or title
If the applicant is an individual, in addition to submitting a declaration form for change of bibliographic items, the applicant should also attach a certificate of name change issued by the household registration department; if the applicant is an organization, when changing the name of the organization, in addition to submitting a declaration form, he should also submit The approval letter from the competent department for the change of name should be attached, or the registration certificate for the change of name in the industrial and commercial administration department should be attached.
②Right to apply for inheritance or donation
Due to the death of the original applicant, it is acquired through inheritance in accordance with the Civil Code If you have the right to apply, you will not need to mention theIn addition to submitting the declaration form for change of bibliographic items, it should also be accompanied by a document issued by a notary office proving that the party is the only legal heir or that the party has included all legal heirs. ; If not all legal heirs request the change, there should also be a statement of consent or renunciation by other fair heirs.
If the applicant voluntarily donates the application right to another person, the donee shall submit a notarized donation document in addition to submitting a declaration of change of bibliographic items when going through the change procedures. Certification: When the applicant goes through the change procedures, in addition to submitting the application form for change of bibliographic items, the applicant should also attach a notarized acceptance statement of the donee.
③Transfer of application rights
The right holder who has obtained the application right through transfer shall not In addition to submitting a declaration form for changes in the bibliographic items, a valid transfer contract signed by both parties should be attached. If necessary, the Patent Office may require the contract to be notarized.
Patent application rights or transfers of patent rights involving overseas residents or legal persons shall comply with the following provisions:
a. When both the transferor and the transferee are overseas residents or legal persons, the original copy of the transfer contract signed by both parties or a notarized copy must be submitted to the Patent Office;
b. When the transferor is a legal person or individual in mainland China and the transferee is an overseas resident or legal person, an approval document from the foreign economic and trade department of the State Council jointly with the science and technology administration department of the State Council approving the transfer must be issued, and The original copy of the transfer contract signed and sealed by both the transferor and the transferee or a notarized copy of the transfer contract;
c. When the transferor is an overseas resident or If the transferee is a legal person or an individual in mainland China, the original copy of the notarized transfer contract signed by both parties must be submitted to the Patent Office;
d. The above The procedures for changing the bibliographic items of a patent application right or patent right transfer must be handled by the transferor's applicant or patentee or the patent agency entrusted by them.
Overseas residents or legal persons in a--d refer to foreigners and foreign enterprises who do not have a regular residence or business office in mainland China, including those from Hong Kong, Macao and Taiwan. resident or legal person. If you have a habitual residence or business office in mainland China, you can apply for patent application rights and patent rights transfer regulations for Chinese residents or legal persons.
④ Transfer application right
The applicant's change procedures shall be handled based on the legally effective decision of the patent management agency or the effective judgment of the People's Court.
⑤Correction of declaration errors
Because the original applicant filled out the request form improperly when applying, the application was omitted. If an applicant fills in or fills in the wrong information and requests that the error be corrected by handling changes in the bibliographic items, the original applicant shall submit a declaration form for change of the bibliographic items and attach a detailed explanation of the original improper application or evidence or proof of the correction.
After the applicant changes, the various legal procedures that have come into effect that have been handled by the original applicant will be binding on the changed applicant. However, if the patent agency entrustment relationship is terminated and the applicant wants to entrust a patent agent after the change, he must go through the patent agency entrustment procedures again. In the case of multiple applicants, if the patent agency entrustment relationship of only some applicants is changed, it does not need to be suspended. However, the newly added applicant shall complete the patent agency entrustment procedures and submit the patent agency entrustment signed by them. Book.
(4) Change of patent agency
Change of patent agency includes applicant’s request for revocation Or the patent agency is changed, or the name and address of the patent agency itself are changed.
① If the applicant requests to change the patent agency, he should submit a declaration of change of bibliographic items and attach a letter of dismissal to revoke the original patent agency and entrust a new patent The agency’s patent agency power of attorney. The letter of dismissal for revocation of the original patent agency shall be made in duplicate, one shall be submitted to the Patent Office and the other shall be delivered to the original patent agency. There is no unified format for the termination letter. The applicant can print it by himself and then sign and seal it to become effective. Applicants who request to change patent agencies need to pay a change fee.
② If the patent agency itself changes its name or address, it should handle two things at the same time: one is to file with the Agency Management Office of the State Intellectual Property Office, and the other is to Each application case shall go through the procedures for changing the bibliographic item. If the name is changed, a certificate of approval from the competent department is required. Changes in the name of a patent agency are subject to prescribed fees.
(5) Other project changes
Other project changes, the main ones include the change of the address of the applicant or patent agency, the replacement and change of the contact person designated by the unit or the agent of the agency designated by the agency, and the seal style of the applicant or patent agency. Changes, etc. These changes generally do not require attachment of certificates, and can be processed as long as the applicant or patent agency submits a signed declaration of change of bibliographic items.
