In the past year, there were many changes in Chinese law and practice relating to IP protection, especially for patent section. Such changes involved not only prosecution of patent applications but also enforcement of patent right. It is recommended that a company should take into account these changes when making IP strategies.
★ Changes in Prosecution and Coping Strategies
Previously, an Invention application is usually examined at latest around four years from the priority date, and a Design application is examined around six months from the filing date. Pursuant to the 328th announcement concerning amendments to “Guidelines for Patent Examinationâ€that took effect on 1 November 2019, an applicant may request the China National Intellectual Property Administration (“CNIPAâ€) to defer examination of invention and design applications by one, two, or three years. It is strongly recommended to request for deferred examination if a company needs extended time to tailor arrangement and protection scope of claims or to make preparation for manufacturing a product incorporating a patented design. Especially for the latter, since a design is very easily copied, it is necessary to keep the design unknown to the public before your product is put into market. Thus whether to request for deferred examination and the term to be deferred should be carefully considered. This may prevent infringement from taking place at an earlier time. It should be noted that the request for deferred examination shall be submitted at the time of filing a request for substantive examination (Invention) or of filing an application (Design).
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