In the patent application process, the priority system is a crucial legal tool. It not only helps applicants better protect their innovations but also provides a longer time window to refine and submit subsequent applications on an international scale. This article will briefly discuss China's regulations on priority system and the considerations for submitting a PCT application with CNIPA as the receiving office, claiming priority from a prior Chinese application.

Definition of Priority

Priority refers to the right to claim the filing date of an initial patent application in one country or region for subsequent applications in the same country or other countries or regions within a specified period (usually 12 months). This system originates from the Paris Convention and aims to provide applicants with a fair opportunity to protect their inventions globally.

The core of the priority system is that when an applicant files subsequent patent applications, these applications are considered to have been filed on the priority date, preventing others from filing similar or identical patent applications during this period. The priority system significantly enhances the applicant's legal standing, ensuring effective protection of their inventions domestically and internationally.

China's Regulations on Priority System

China's priority system includes foreign priority and domestic priority, with differences in legal effect.

(a) Foreign Priority

Article 29, Paragraph 1 of the Patent Law states: "An applicant who, within 12 months from the date of the first filing of a patent application for an invention or utility model in a foreign country, or within 6 months from the date of the first filing of a patent application for an industrial design in a foreign country, files a patent application for the same subject matter in China, may enjoy the right of priority in accordance with any agreement signed between the foreign country and China, any international treaty to which both countries are party, or the principle of mutual recognition of priority."

This is konwn as foreign priority, originating from the Paris Convention.

(b) Domestic Priority

Article 29, Paragraph 2 of the Patent Law states: "An applicant who, within 12 months from the date of the first filing of a patent application for an invention or utility model in China, or within 6 months from the date of the first filing of a patent application for an industrial design in China, files a patent application for the same subject matter with the Patent Administration Department under the State Council, may enjoy the right of priority."

This is known as domestic priority.

Main Differences between Foreign and Domestic Priority

Article 35, Paragraph 2 of the Implementing Regulations of the Patent Law states: "When filing a subsequent application, the earlier application may not serve as the basis for claiming domestic priority if:

(a) Foreign or domestic priority has already been claimed;

(b) A patent right has already been granted;

(c) It is a divisional application filed in accordance with regulations.

When an applicant claims domestic priority, the earlier application is deemed withdrawn from the date of filing the subsequent application, except for design patent applications claiming priority from an invention or utility model patent application."

Priority Grace Period

Article 36 of the Implementing Regulations of the Patent Law states: "If an applicant files a patent application for the same subject matter after the time limit specified in Article 29 of the Patent Law, with good reasons, they may request the restoration of priority within two months from the expiration of the time limit."

In practice, CNIPA is not strict about the reasons for the grace period, and requests for the grace period are generally approved.

Considerations for Submitting a PCT Application Claiming Priority from a Chinese Application

1 Examination Standards

When submitting a PCT application claiming priority from a Chinese application, if CNIPA acts as the receiving office, international searching authority, and designated office, the examination standards are as follows:

• Receiving Examination Stage: CNIPA will examine whether the priority claim in the request form correctly includes the date of the earlier application, the application number, and the country where the earlier application was filed, and will review the priority period. The examination status of the earlier application is not reviewed.
• International Search Stage: As long as the content of the earlier application is sufficient to determine the filing date, regardless of the final examination outcome of the earlier application (e.g., whether a patent right is granted), it can be used to establish the priority date.
• National Phase in China: CNIPA will examine the priority claim according to domestic priority regulations. If a notice of grant and registration procedures has been issued for the earlier application and the applicant has completed the registration procedures before the international filing date, the international application will be considered not to have claimed priority. If the earlier application has not been granted a patent or is granted after the international filing date, examination for double patenting will be conducted.

2 Recommendations for Applicants Submitting PCT Applications

Considering that utility model patent application in China does not require substantive examination and the examination period is generally within 12 months, applicants should submit their PCT applications as early as possible if they are claiming priority from a utility model patent and CNIPA is the receiving office. This is to avoid the utility model patent being granted before the PCT filing date, which would prevent claiming priority and could result in the PCT application being rejected in the national phase in China due to double patenting issues.