Restoration and correction of priority rights in Chinese patent applications

The revised "Implementing Rules of the Patent Law of the People's Republic of China" promulgated on December 21, 2023 introduced content related to the overdue restoration of priority, the addition and correction of priority, and the incorporation by reference.

Late restoration of priority rights

• Article 36 of the Implementing Regulations of the Patent Law of China stipulates that 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, if there are legitimate reasons, request restoration of priority within 2 months from the date of expiration of the time limit.
• Applicable rules:
  • Priority must be claimed at the same time as the subsequent application is filed; if the subsequent application does not claim priority, it cannot be directly requested for restoration regardless of whether it is within the priority period.
  • The request to restore the right of priority can be filed simultaneously with the subsequent application or separately after filing the application (while claiming priority).
  • The overdue restoration of priority right does not apply to design applications
  • PCT applications are subject to Article 36
    • For the overdue restoration of priority that has been applied in the international phase, it will be recognized in the national phase
    • Applicants no longer need to file a request to restore the right of priority
    • If you claim priority during the international phase but do not apply for overdue restoration of priority, you can request overdue restoration of priority within 2 months from the entry date.

Addition and correction of priority rights

• Article 37 of the Implementing Regulations of the Patent Law of China stipulates that if an applicant for an invention or utility model patent claims priority, he or she may request to add or correct the priority claim in the application within 16 months from the priority date or 4 months from the application date.
• Applicable rules:
  • The application must be filed within the priority period, and it is not allowed to be applied in conjunction with Article 36 of the Implementing Regulations of the Patent Law
  • The application has claimed at least one priority (and it is established), and de novo application is not allowed
  • A request to add or correct a priority claim must be filed within 16 months from the earliest priority date.
  • The term “correction” as used in this Article applies to situations where all or part of the bibliographical information concerning the claimed priority right needs to be corrected.
  • This article does not apply to design patent applications

Join by reference

• Article 45 of the Implementing Regulations of the Chinese Patent Law stipulates that if an invention or utility model patent application lacks or erroneously submits claims, specifications, or part of claims or specifications, but the applicant claims priority on the date of submission, the applicant may make up the application by citing the prior application documents within 2 months from the date of submission or within the period specified by the patent administration department of the State Council. If the supplementary documents comply with the relevant regulations, the filing date of the first submission shall be the filing date.
• Applicable rules:
  • The first filing time must be within the 12-month priority period stipulated in Article 29 of the Patent Law (not applicable in conjunction with Article 36 of the Implementing Regulations of the Patent Law); if the application is filed more than 12 months after the earliest priority date, the application document cannot be added by reference, that is, the application document cannot be added by reference, and the applicant must re-submit the patent application
  • There is a request for the first filing, and the priority claim is claimed when applying, but all or part of the claims and the description (including drawings) are missing or mis-submitted.
  • A "Statement of Incorporation by Reference" was also filed (this statement is deemed to have been made if the standard form is used)
  • Only the contents recorded in the priority claim are allowed to be incorporated by reference (not applicable in conjunction with Article 37 of the Implementing Regulations of the Patent Law)
  • If the PCT application has been incorporated by reference in the international phase, it will be accepted in the national phase
  • Incorporation by reference is not applicable to design applications
  • Submit the documents within 2 months from the date of submission or within the specified period