I. Background of the Deferred Examination System
In September 2019, the China National Intellectual Property Administration (CNIPA) issued Announcement No. 328, amending the “Patent Examination Guidelines” to formally introduce the deferred examination system. Article 56, Paragraph 2 of the “Implementing Regulations of the Patent Law,” promulgated on December 21, 2023, stipulates that applicants may request deferred examination for their patent applications. These new regulations will come into effect on January 20, 2024. The new “Patent Examination Guidelines,” issued on the same day, inherit the provisions on deferred examination from the 2019 guidelines and will also take effect on January 20, 2024.
II. Questions and Answers Related to Deferred Examination
- Which patent applications are eligible for deferred examination? Patent applications filed or with substantive examination requested on or after November 1, 2019, including PCT international applications, are eligible for deferred examination.
- Is there an additional fee for requesting deferred examination? No additional fees are required to request deferred examination from CNIPA.
- Who can request deferred examination for a patent application? Only the applicant of the patent can request deferred examination.
- When can a deferred examination request be made?
- For invention patents, the request can be made simultaneously with the request for substantive examination.
- For utility model patents, the request can be made simultaneously with the submission of the utility model patent application.
- For design patents, the request can be made simultaneously with the submission of the design application.
- Does deferred examination require review? No review is needed; the deferred examination will automatically take effect on the effective date.
- When does the deferred examination take effect?
- For invention patents, it takes effect on the date the substantive examination request becomes effective.
- For utility model patents, it takes effect on the filing date.
- For design patents, it takes effect on the filing date.
- What is the duration of the deferred examination?
- For invention patents, applicants can choose to defer examination by 1, 2, or 3 years.
- For utility model patents, applicants can choose to defer examination by 1 year.
- For design patents, applicants can choose to defer examination by 1-36 months (in 1-month increments).
- Where can one view the deferred examination acceptance notice?
- For invention patents, it is recorded in the notification of entering the substantive examination phase.
- For utility model and design patents, it is recorded in the patent application acceptance notice.
- Is there any remedy if the deferred examination request submission time is missed? Currently, there is no remedy for missing the submission time.
- Can a deferred examination request be withdrawn proactively? Yes, the applicant can withdraw the deferred examination request at any time before the expiration of the deferred period (including before the deferred examination takes effect).
III. Limitations of Deferred Examination
Deferred examination can change the start time of the examination but does not affect other deadlines during the examination process (e.g., the submission time for voluntary amendments of invention patents). For invention patents, the submission time for voluntary amendments remains within three months from the date of the substantive examination request or the notification of entering the substantive examination phase. For utility model and design patents, it remains within two months from the filing date. Additionally, CNIPA may terminate the deferred examination and initiate the examination process as necessary, notifying the applicant.
IV. Comparison with Other Delay Methods
Among the publication time of invention patents, the start time of substantive examination, and the effective time of patent rights, currently only the start time of substantive examination can be deferred at the applicant’s request. The publication time of invention patents can only be advanced, not deferred, at the applicant’s request. The effective time of patent rights cannot be deferred at the applicant’s request but can be delayed by postponing the registration procedures, with the delay being relatively short and possibly involving additional restoration request fees.
V. Application of Deferred Examination
Before the introduction of the deferred examination system, applicants for invention patents only had two options: speeding up the examination process (patent highway, priority examination, rapid pre-examination, early publication) or undergoing normal examination. With the limited means to control the examination process, the introduction of the deferred examination system provides applicants with more choices, allowing them to adjust the examination cycle to match the marketization of the patent. Specifically, applicants can estimate the time needed to request deferred examination based on the marketization schedule of the patent and submit the corresponding request. It should be noted that deferred examination only ensures that the examiner will not pick up the case within the deferred period, and it is unknown how long it will take for the patent application to be examined after the deferred period, similar to when deferred examination is not requested.
Applicants can gain more time to consider or adjust the scope of the claims’ protection through deferred examination. Since the submission time for voluntary amendments is not extended by requesting deferred examination, applicants can adjust the scope of claims by filing divisional applications or amending claims when responding to examination opinions after the deferred period. Divisional applications can only be submitted when the parent application is still pending. In practice, requesting deferred examination for the parent application can extend its pending time and the time for filing divisional applications. Similarly, deferred examination can be requested for divisional applications, extending their pending time. If the divisional application also involves a lack of unity identified by the examiner, new divisional applications can be filed based on this, extending the lifespan of the entire patent family. In practice, the lack of unity for a divisional application can exist at the time of submission or be introduced during voluntary amendments or in response to examination opinions. To achieve such patent layout, applicants should record multiple sets of technical solutions in the parent application to submit corresponding divisional applications when needed.
Since deferred examination prolongs the pending time of the parent application, to quickly obtain protection for relevant technical solutions, a combined strategy of deferred examination and early publication can be used. Specifically, for the parent application, deferred examination can provide more time to adjust the claims’ protection scope based on actual circumstances. For divisional applications, early publication can speed up the examination process. Additionally, after the publication of the invention patent application, applicants can request those implementing the invention to pay appropriate fees, gaining “temporary protection.”
Combining deferred examination and early publication also has another benefit: the early published parent application (assuming it records multiple technical solutions with a potentially large protection scope) acts as a deterrent, forcing competitors to invest more resources in modifying their technical solutions. Meanwhile, the parent application under deferred examination remains in a “pending” state for a long time, preventing competitors from filing invalidation declarations against it.
For utility model patents, which typically have shorter examination cycles (compared to invention patents), a similar strategy combining deferred examination and early publication can be employed. Specifically, applicants can apply for both an invention patent and a utility model patent based on the same or a set of technical solutions on the same day and request deferred examination for the invention patent. This way, the utility model patent can be granted quickly to provide protection for the technical solution, while the invention patent gains extended pending time for adjusting the claims’ protection scope. Note that, unlike the strategy combining deferred examination and early publication, the utility model patent in a dual application strategy must meet the specified protection subject. For example, method patents or material combination patents are not suitable for the dual application strategy.
Applicants can also use deferred examination to gain more time to wait for the examination results of foreign counterparts, providing a reference when responding to examination opinions for domestic applications.
In some cases, if applicants want to delay responding to the first examination opinion as long as possible, they can request deferred examination.
Design patents also typically have short examination cycles. For products with longer development cycles, the announcement of the design patent often precedes the product’s market launch. The “what you see is what you get” nature of design patents makes them easy to copy. If the patent holder is not fully prepared for commercial application (e.g., handling counterfeiting), premature disclosure of the design may harm their commercial interests. In such cases, requesting deferred examination when submitting the design application is a reasonable strategy.
VI. Conclusion
The introduction of deferred examination is a significant reform in China’s patent system. It complements the fast (patent highway, priority examination, rapid pre-examination, early publication), medium (regular examination), and slow (deferred examination) speeds for entering the examination phase, providing applicants with more choices and flexibility. The main advantages of the deferred examination system include:
- Providing applicants with more options to adjust the examination cycle according to the marketization timeline of the patent.
- Giving applicants more time to consider or amend the scope of claims’ protection.
- Offering applicants more tools to extend the lifespan of the patent family while securing temporary protection for relevant technical solutions.