Until recently, it was typically difficult for a non-Chinese applicant to accelerate a patent application, due to the requirement of submitting a request form sealed by a provincial Chinese IP Bureau the applicant is resident in. However, as of 1st August 2017, the Chinese Patent Office has not only extended the possibility of acceleration to design and utility model applications as well as patent applications, but it is now theoretically possible for non-Chinese applicants to take advantage of acceleration. But what are the advantages of requesting acceleration and what criteria do you have to meet to accelerate your application?
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China, sometimes referred to as ‘Factory Asia’, reportedly made almost half of the world’s goods in 2015. The Chinese consumer market is the world’s second largest, behind only the US. With such impressive statistics, increasing number of companies outside of China see IP protection in China as an important part of their IP strategies. Although IP right infringements are known to be an issue, the Chinese government has started to encourage usage of inventions and commercialisation, as well as improving IP law enforcement and protection. Accelerating the application process to obtain protection as soon as possible is sometimes advantageous and necessary.
To request acceleration of your Chinese patent, utility model or design applications, one of the following criteria needs to be met:
- The invention relates to one of the following fields: environmentally friendly technology, a new generation of information technology, biology, high-end equipment manufacturing, new energy, new material, new-energy vehicle, intelligent manufacturing, the internet, big data, cloud computing;
- The applicant has completed preparation for implementing the invention, has begun preparation or has evidence of a third party implementing the invention;
- The Chinese application being the first filing, and a corresponding application in a foreign jurisdiction has been filed claiming priority to the Chinese application;
- The invention is of significant importance to the Chinese state and public interest.
Furthermore, the patent application will need to have entered the substantive examination stage, and the utility model/design application will need to have been accepted as an application with the necessary official fees paid. It is further required to provide any known relevant prior art documents to the Chinese Patent Office when submitting the acceleration request.
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If you do wish to obtain patent/utility model/design protection as soon as possible in China, but your invention does neither relate to one of the relevant technological fields nor have you begun preparing implementation of the invention, then you can opt for first filing in China and then filing in a second jurisdiction, straight away claiming priority to the Chinese application.
An important point to note is that, based on our practice experience, an application in Hong Kong, Macau or Taiwan is not considered to meet the criteria of point 4 above. However, an international or regional application, such as a European patent/design application, an International PCT patent application or an International Hague design application, would be acceptable.
Therefore, when considering filing strategies and before filing any applications, it is imperative to consider if obtaining protection early in China is important and the most appropriate route to take to request acceleration in China.
If you already have a Chinese patent application pending but none of the above criteria are met, it may still be possible to accelerate your application via the Patent Prosecution Highway (PPH) programme if you have a corresponding application deemed allowable in one of the approved jurisdictions.
Please do not hesitate to contact one of our patent attorneys if you would like further advice on accelerating your Chinese application in China.