Restoration, addition and correction of priority rights in Chinese patent applications

I. Procedure for Restoring Priority Rights of Chinese Patent Applications

Article 36 and Article 128 of the Implementing Regulations of the Patent Law of China stipulate the conditions for restoring the priority right of invention or utility model applications filed through the Paris Convention and applications entering the Chinese national phase through the PCT, respectively.

For invention or utility model applications submitted through the Paris Convention, according to Article 36 of the Implementing Regulations: If an applicant files an invention or utility model patent application for the same subject matter with the patent administration department of the State Council beyond the time limit prescribed in Article 29 of the Patent Law, he or she may request restoration of the priority right within 2 months from the date of expiration of the time limit if there are legitimate reasons.

For applications entering the Chinese national phase through PCT, according to Article 128 of the Implementing Rules: if the filing date of the international application is within 2 months after the expiration of the priority period, and the receiving Office in the international phase has approved the restoration of priority, it shall be deemed that a request for restoration of priority has been made in accordance with Article 36 of these Rules; if the applicant has not requested restoration of priority in the international phase, or has made a request for restoration of priority but the receiving Office has not approved it, the applicant may, if there is a legitimate reason, request restoration of priority to the Patent Administration Department of the State Council within 2 months from the entry date.

The Patent Examination Guidelines also stipulate that if a subsequent application is filed after the expiration of twelve months from the filing date of the prior application, before the Patent Office makes preparations for publication, the applicant may request restoration of priority within two months from the expiration of the period.

According to the relevant provisions of the Implementing Rules and Patent Examination Guidelines, for invention or utility model applications filed through the Paris Convention, the time conditions for applicants to request restoration of priority rights are:

• Within 2 months after the expiry of the 12-month priority period
• Before the Patent Office is ready for publication

Therefore, applicants need to strictly abide by the relevant time requirements when requesting restoration of the right of priority pursuant to Rule 36 of the Implementing Regulations.

II. Procedures for adding and correcting priority rights for Chinese patent applications

According to Article 37 of the Implementing Regulations: A patent applicant may request to add or correct a priority claim within 16 months from the priority date or within 4 months from the application date. If an applicant requests to add or correct a priority claim, he or she shall request priority when submitting the application and submit a request for adding or correcting a priority claim within the prescribed time limit. If an applicant requests to add a priority claim, he or she shall also pay the priority claim fee at the same time.

3. Notes

The provisions of Articles 36 and 37 of the Implementing Rules cannot be superimposed. For example, if a request for restoration of priority has been made in accordance with Article 36 of the Implementing Rules, the priority claim cannot be added or corrected in accordance with Article 37 of the Implementing Rules; Articles 36/128 and 37 of the Implementing Rules cannot be applied at the same time as Article 45 (incorporation by reference). That is, if the circumstances fall under Articles 36/128 and 37 of the Implementing Rules, Article 45 of the Implementing Rules shall not apply, and vice versa.