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Combination of Deferred Examination and Patent Prosecution Highway
Chris Wong
Patent Attorney
Electrical Engineering Department
Welcome to Linda Liu & Partners on air. My name is Chris Wong, I’m a patent attorney in electronics. I have been working here for more than 10 years.
It is generally known that the new version of Guidelines for Patent Examination has entered into force on November 1, 2019 in China, of which a highlight is the introduction of the deferred examination system. The introduction gives an applicant the opportunity to request a deferred examination, so that the applicant will have more time to consider the scope of protection or whether to submit more divisional applications.
For instance, Company A filed an invention patent application for a technology in 2019. Let’s call this invention patent application as CN1. On one hand, as the products manufactured using this technology will be launched in the future, for instance, in 2023, Company A was not sure whether the scope of protection of the granted invention patent right could completely cover the future products. On the other hand, when the launch of the products approaches, Company A wants to get one more granted invention patent rights on the basis of the invention patent application CN1 according to the products.
How to meet the above requirement of Company A? Our firm proposed the following suggestions in conjunction with the deferred examination, divisional application and Patent Prosecution Highway which is abbreviated as PPH. Specifically, it is assumed that the parent invention application is CN1 and the divisional application from the parent application is CN2; we recommend to use the deferred examination system for the parent application CN1, and request for deferred examination with a three-year delay to ensure that several new divisional invention patent applications can be filed at any time according to new product requirements; meanwhile, we recommend to use PPH for the divisional application CN2, so as to accelerate the examination to get a granted patent right as soon as possible.
Specifically speaking, firstly, the effect of the PPH request is mainly to accelerate the examination of invention patent so that it is possible for the invention patent applications to receive the Office Action quickly. In addition, most Chinese examiners may refer to the favorable examination results of the family application when the PPH request was approved. Therefore, requesting PPH can increase the possibility of granting an invention patent application.
Secondly, the deferred examination system applies both to invention and design patent applications. For invention patent application, the deferred examination is mainly to obtain more time to adjust the layout and protection scope of the claims.
Therefore, on one hand, Company A can defer the examination for the parent application CN1 and reserve the opportunity to file another divisional application; on the other hand, Company A can accelerate the examination for the divisional application CN2 to obtain a granted invention patent right as soon as possible, and thus meet the above requirement of the Company A.
In addition, it should be noted that if the opposite method is adopted, that is, the PPH system is used for the parent application CN1 and the deferred examination system is used for the divisional application CN2, the above requirement of Company A may not be realized. The reason is as follows. According to Chinese practice, there are no excessive limits on the number of divisional applications that can be filed during the pending period of the parent application CN1. However, in the case that the parent application CN1 is closed, if the applicant desires to file a new divisional application based on the divisional application CN2 according to new product requirements, there are restrictions that the examiner must issue a unity opinion in one Office Action for the divisional application CN2.
The above explanation is the solution proposed by our firm for the above requirement of company A for your reference.
If you need assistance or have any question about this matter, please feel free to consult.
As a leading patent law firm in China, we are always glad to help.
This is Chris Wong from Beijing. Thank you for listening. See you next time.
