During the process from application to grant or rejection, and even afterwards, a patent encounters various deadlines. Sometimes it can be confusing to remember all of them. Here is a summary for easy reference.
I. Basic Concepts
- Filing Date: The filing date determines the search date for novelty and inventiveness during the patent examination process and is the starting point for various deadlines and fees. How is the filing date determined?
- If a patent application is directly submitted to the receiving office or a local branch office, the date of receipt is the filing date.
- If mailed to the receiving office or a local branch office, the postmark date is the filing date. If the postmark is unclear, the date of receipt by the office will be the filing date.
- If submitted via a courier company, the date of receipt by the office is the filing date.
- If mailed or delivered to a non-receiving department or individual, the mailing or delivery date does not determine the filing date. The filing date is the actual date the receiving office gets it.
- For electronic applications, the date the electronic application system receives the documents is the filing date.
- For divisional applications, the filing date is the same as the original application.
- For PCT applications entering the Chinese national phase, the international filing date is considered the filing date.
- Priority Date: The priority date is the date claimed for priority in patent applications (inventions or utility models). Priority can be either foreign or domestic:
- Foreign Priority: If an applicant files a patent application for the same subject matter in China within the prescribed time from the first filing date abroad, they can enjoy priority based on agreements or treaties China is part of, or mutual recognition principles.
- Domestic Priority: If an applicant files a subsequent patent application for the same subject matter in China within the prescribed time from the first filing date in China, they can claim priority. This also applies to subsequent applications for designs within six months.
II. Deadline Summary
| Event | Time |
|---|---|
| Application fee, publication printing fee, additional fees, priority fee | Within 2 months from the filing date or 15 days from receiving the acceptance notice |
| Request for substantive examination | Within 3 years from the filing date (priority date) |
| Substantive examination fee for invention patent | Within 3 years from the filing date (priority date) |
| Period for voluntary amendment for invention patents | Within 3 months of requesting substantive examination or receiving the notice of entering substantive examination |
| Period for voluntary amendment for utility model or design | Within 2 months from the filing date |
| Publication of invention | 18 months from the filing date (priority date) |
| Grace period for non-prejudicial disclosures | Within 6 months before the filing date, with proof submitted within 2 months from the filing date |
| Priority period | 12 months for invention or utility model from first filing date, 6 months for design from first foreign filing date |
| Priority document submission period | Within 16 months from the priority date |
| Priority fee payment period | Within 2 months from the filing date or 15 days from receiving the acceptance notice |
| Submission period for prior application documents | Within 16 months from the priority date |
| Proof of priority transfer | Within 16 months from the priority date |
| Biological material deposit | Before or on the filing date (priority date), with proof within 4 months from the filing date (or from entering the national phase for PCT) |
| Submission period for divisional application | Before the deadline for completing registration procedures after receiving the grant notice; within 3 months of receiving rejection decision; during the review or litigation period following rejection |
| Response to examination opinion | 4 months for the first examination opinion, 2 months for other notices |
| PCT Article 19 amendment | Within 2 months from the international search report or 16 months from the priority date, whichever is later |
| PCT Article 34 amendment | Until the issuance of the preliminary examination report |
| PCT Articles 28/41 amendment | Upon entering the national phase |
| Voluntary amendment in China phase | Within 2 months of entering the national phase for utility models; when requesting substantive examination or within 3 months of receiving the notice of substantive examination for inventions |
| Registration procedures for grant | Within 2 months of receiving the grant notice |
| Patent registration fee (suspended), publication printing fee (suspended), annual fee for the grant year, stamp tax | Within 2 months of receiving the grant notice |
| Annual fees for subsequent years | Before the expiration of the previous year |
| Extension request fee | Before the expiration of the relevant deadline |
| Request fee for rights restoration due to legitimate reasons | Within 2 months of receiving the notification from the State Intellectual Property Office |
| Request for reexamination | Within 3 months of receiving the rejection decision |
| Reexamination fee | Within 3 months of receiving the rejection decision |
| Patent term | 20 years for invention patents, 10 years for utility model patents, 15 years for design patents, all calculated from the filing date |
| Refund request for overpaid, double-paid, or incorrect fees | Within 3 years from the date of payment |
III. Special Reminders
- Electronic application response time: The 15-day postal period is canceled.
- Provision: For applications submitted via the electronic filing system, all documents will be delivered electronically. The delivery date is the date the document enters the electronic system. For paper applications, the delivery date is presumed to be 15 days from the mailing date.
- Interpretation: Since nearly 99% of patent applications are submitted electronically, after the new regulations take effect, the 15-day postal period will no longer apply for calculating response times to official notices.
- Example: If an electronic application receives an official notice with a mailing date of January 20, 2024, and the response period is 2 months, the response deadline is March 20, 2024.
- Effective Scope: Official notices for electronic applications issued after January 20, 2024.
Failing to adhere to certain key deadlines can be irreparable, and missing timely responses to official notices can lead to lost opportunities. It is crucial for patent practitioners to thoroughly understand and remember these common deadlines.