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FAQ

Application Processing
QDoes the Patent Reexamination Board (PRB) provide any consulting service to the public?

A

Yesthe contact information of PRB for public consulting service are as follows:

Telephone: 8610-62801799; Fax: 8610- 62801800

QWho and when may submit a request for reexamination?

AWhere an applicant for patent is not satisfied with the decision of the Patent Office rejecting his or its application, the applicant may, within three months from the date of receipt of the decision, request PRB to make a reexamination. In general, only the applicant may file a request for reexamination, and the applicant is called petitioner in reexamination procedure.

QMay a petitioner submit a request for reexamination by himself, without entrusting a patent agency?

AYes, even if the patent application is filed by entrusting a patent agency, the petitioner may also file a request for reexamination by himself, without entrusting a patent agency and with the item of “patent agency” in the Form of Request for Reexamination blank, except as otherwise provided by the Patent Law.

QWhat kinds of documents shall a petitioner provide when filing a request for reexamination?

A

When filing a request for reexamination, the petitioner shall submit the Request for Reexamination and explain the causes therein, and attach the relevant evidence if necessary. The petitioner shall use the Form of Request for Reexamination made by the Patent Office, and fill the Form as required in the Notes.

The petitioner can download the Form of Request for Reexamination from http://www.sipo-reexam.gov.cn/scyfw/bgxz/.
 

QWho and when may submit a request for invalidation?

AWhere, from the date of the announcement of the grant of the patent right by the Patent Office, any entity or individual considers that the grant of the said patent right is not in conformity with the relevant provisions of the Patent Law, it or he may submit a request for invalidation to request PRB to declare the patent right invalid.

QWhat kinds of documents and certificates shall a petitioner provide when filing a request for invalidation?

A

When filing a request for invalidation, the petitioner shall submit the Request for Invalidation and the evidences in duplicate. The evidence materials submitted by the petitioner shall be classified and numbered, and shall be consistent with the attachment list. If necessary, the petitioner shall submit the document certifying his identification. The petitioner shall use the Form of Request for Invalidation made by the Patent Office, and fill the Form as required in the Notes.

The petitioner can download the Form of Request for Invalidation from http://www.sipo-reexam.gov.cn/scyfw/bgxz/.
 

QWhere shall the party submit the documents of reexamination or invalidation procedure?

A

(1) Submitting documents in person

The party concerned may hand in the documents of reexamination or invalidation procedure in person to either of the following two service windows of the Filing and Proceeding Administration Division of PRB:
Service Window at Room 302, Floor 3, Building 3 of SIPO, or
Service Window at Floor 2, Yingu Building, No.9, North 4th Ring Road West, Haidian District, Beijing City.

(2) Submitting documents by mail

The party concerned may also mail the documents of reexamination or invalidation procedure to the following address:
Patent Reexamination Board, State Intellectual Property Office of China, No.6  Xitucheng Road, Haidian District, Beijing City, Postal Code 100088.
 

QDo the local patent receiving agencies receive a request for reexamination or invalidation?

ANo, currently the local patent receiving agencies do not receive a request for reexamination or invalidation.

Q May a request for reexamination or invalidation be submitted online?

AYes, from April 26th 2013 a request for reexamination or invalidation may be submitted by the Electronic Documents Filing System of the Patent Reexamination Board. A party concerned may download the CPC client offline upgrade package from the following website before using the Electronic Documents Filing System of PRB:
http://www.cponline.gov.cn/tooldown/index.jhtml

QCan a petitioner file a request for restoration of right if the time limit of filing a request for reexamination expires? What kinds of documents shall be submitted? How about the fee?

A

Yes, If three months from the date of receipt of the rejection decision expires, a petitioner may, within a time limit of two months for restoration, file a request for restoration of right together with a request for reexamination, and pay the fees for reexamination and restoration. If a petitioner fails to submit the request for restoration, or the request for reexamination, or the fees for restoration and reexamination before the time limit for restoration expires, i.e., five months from the date of receipt of the rejection decision, the right for reexamination shall not be restored and the request for reexamination shall not be accepted.

For information concerning the fee for restoration please refer to the website: http://www.sipo-reexam.gov.cn/scyfw/bszn/.

The petitioner may download the Form of Request for Restoration of Right from the website: http://www.sipo-reexam.gov.cn/scyfw/bgxz/.
 

QMay the time limit for response in reexamination procedure or invalidation procedure be extended? How to file a request for extending the time limit? How long the time limit can be extended?

A

The petitioner may only request to extend the time limit specified by PRB in reexamination procedure. Any time limit during the invalidation procedure cannot be extended.

When filing a request for extension of the specified time limit in reexamination procedure, the petitioner shall file the request before the expiration of the time limit, state the reasons and pay the fee for requesting extension. Where the extension of the time limit is less than one month, it shall be calculated as one month. The extension of a time limit shall not exceed two months.
 
Generally, a time limit, which is specified in the same notification or decision, may be extended only once.
 

QWhat can a petitioner do if the time limit for response is expired?

AWhere the requirements provided in Rule 6.1 and Rule 6.2 of the Implementing Regulations of the Patent Law is met, the petitioner can file a request for restoration of right.

QHow long will PRB make a notification after a petitioner makes a rectification?

A

It depends on every specific case. Where the rectification meets the requirements provided in the Patent Law, the Implementing Regulations for the Patent Law and the Examination Guidelines, PRB will issue a Notification of Acceptance to the petitioner as soon as possible. Where the defects still exist after the petitioner makes rectification, PRB may issue another Notification to Make Rectification or Notification of Nonacceptance of Request to the petitioner.

The petitioner may download the Form of Rectification from the website: http://www.sipo-reexam.gov.cn/scyfw/bgxz.

To be specific, the petitioner can download “100904 Rectification for Reexamination and Invalidation Procedure” in the item of “Form for Reexamination Procedure” or “Form for Invalidation Procedure”.
 

QCan a petitioner inquire the electronic version of a reexamination or invalidation decision made by PRB?

AYes, the Patent Reexamination Board has published all decisions it has made on the website www.sipo-reexam.gov.cn and has been uploading new decisions in time. The public can retrieve the decisions in the item of “Examination Decision Retrieval” on the website.

Q Presenting Evidence in a Foreign Language

A

Where the party concerned submits a piece of evidence in a foreign language,he shall also submit the Chinese translation thereof.If he fails to submit the Chinese translation for the evidence within the time limit,the foreign language evidence shall be deemed not to have been submitted.

The party concerned shall submit the Chinese translation in written form.If he fails to submit the Chinese translation in written form,said Chinese translation shall be deemed not to have been submitted.

The party concerned may submit the Chinese translation only for part of the foreign language evidence.Other parts of the foreign language evidence without Chinese translation being submitted shall not be taken as evidence,unless the Chinese translation for the other parts are subsequently submitted at the demand of the Patent Reexamination Board.

If the opposite party has objection to the contents of the Chinese translation,he shall submit the Chinese translation for the disputed parts within a specified time limit.Failure to submit the Chinese translation shall be deemed as having no objection to the translation.

Where there is a dispute over the Chinese translation,if the both parties have reached an agreement as to the translation,the agreed translation shall be used; if the both parties cannot reach an agreement as to the translation,the Patent Reexamination Board may entrust a translator to translate if necessary.Where the both parties have reached an agreement on the translator,the Patent Reexamination Board may entrust the translator as agreed on by the both parties to translate,for the full text,the part to be used,or the part in dispute.Where the both parties cannot reach an agreement on the translator,the Patent Reexamination Board may entrust ex officio a professional translation agency to translate.The both parties shall respectively bear 50% of the translation fee for the entrusted translation.The party refusing to pay the translation fee shall be deemed to acknowledge that the Chinese translation submitted by the other party is correct.
 

QVerification Formalities for Evidence Formed Abroad or in Hong Kong,Macao,or Taiwan

A

Evidence formed abroad means the evidence formed beyond the territory of the Peoples Republic of China.The evidence shall be notarized by the notary organs in the country concerned and verified by the Chinese Embassy or Consulate to the country,or shall be subject to any verification formalities provided in a treaty between China and the country.

For evidence formed in Hong Kong,Macao or Taiwan,the relevant verification formalities shall also be gone through.

However,in any of the following circumstances,the party concerned may not go through the relevant verification formalities in the invalidation procedure for the two kinds of evidence mentioned above:

(1)the evidence can be obtained via domestic public channels(Hong Kong,Macao and Taiwan excluded),e.g.,foreign patent documents obtained from the Patent Office,or foreign literature obtained from a public library;

(2)the authenticity of the evidence can be sufficiently supported by other evidence; or

(3)the authenticity of the evidence is acknowledged by the opposite party.
 

QFormalities Regarding Appointment of Representation

A

(1)As regards the appointment,dissolution or resignation of appointment in the reexamination procedure,formalities shall be settled before the Patent Office according to the provisions of Chapter 1,Section 6.1 of Part I.However,if the petitioner appoints a patent agency in the reexamination procedure and indicates in the power of attorney that the scope of the power entrusted is limited to matters in the reexamination procedure,the formalities concerning the appointment,dissolution or resignation of appointment shall be settled before the Patent Reexamination Board and the above provisions shall apply mutatis mutandis,without the need to change the bibliographic data.

Where the petitioner goes through the formalities concerning the appointment of a patent agency before the Patent Reexamination Board and fails to indicate in the power of attorney that the scope of the power entrusted is limited to matters in the reexamination procedure,a rectification shall be made within the specified time limit; otherwise,the appointment shall be deemed not to have been made.

(2)Where the petitioner has appointed more than one patent agency at the same time,he shall designate in written form one of the agencies as the contact person.If no agency is designated,the Patent Reexamination Board will take the agency entrusted first in the reexamination procedure as the contact person; where more than one agency was entrusted first,the Patent Reexamination Board will take the agency in the first name order as the contact person; where there is no name order(separately entrusted on the same day),the Patent Reexamination Board shall notify the petitioner to designate within a specified time limit,and if no designation is made within the time limit,the appointment shall be deemed not to have been made.

(3)Where according to Article 19.1 the petitioner shall appoint a patent agency,if he fails to appoint any agency,the request for reexamination shall not be accepted.
 

QFormalities Regarding Appointment of Representation

A

(1)Where,during the invalidation procedure,the petitioner or the patentee appoints a patent agency,he must submit the power of attorney for invalidation procedure,and the patentee shall indicate in the power of attorney that the scope of the power entrusted is limited to matters in the invalidation procedure.In invalidation procedure,even if the patentee has appointed an agency for the whole term of the patent and continues to appoint the same one,he must also submit the power of attorney for invalidation procedure.

(2)Where,during the invalidation procedure,the petitioner or the patentee appoints a patent agency,and indicates in the power of attorney that the scope of the power entrusted is limited to matters in the invalidation procedure,the formalities concerning appointment,dissolution and resignation of appointment shall be settled before the Patent Reexamination Board,without the need to change the bibliographic data.

Where the petitioner or the patentee appoints a patent agency and fails to submit the power of attorney to the Patent Reexamination Board or the scope of the power entrusted is not indicated in the power of attorney,or the patentee fails to indicate in the power of attorney the scope of the power entrusted is limited to matters in the invalidation procedure,the Patent Reexamination Board shall notify the petitioner or the patentee to make rectifications within a specified time limit.If no rectification is made within the time limit,the appointment shall be deemed not to have been made.

(3)Where the petitioner and the patentee have appointed the same patent agency,the Patent Reexamination Board shall notify the both parties to change their appointments within a specified time limit.If no change of appointment is made within the specified time limit,the later appointment shall be deemed not to have been made; if the both appointments were made on the same date,both of them shall be deemed not to have been made.

(4)Where the petitioner shall appoint a patent agency according to Article 19.1,but fails to meet this requirement,the request for invalidation shall not be accepted.

(5)Where the petitioner has appointed more than one patent agency at the same time,he shall designate in written form one of the agencies as the contact person.If no agency was designated,the Patent Reexamination Board will take the agency entrusted first in the invalidation procedure as the contact person; where more than one agency was entrusted first,the Patent Reexamination Board will take the agency in the first name order as the contact person; where there was no name order (separately entrusted on the same day),the Patent Reexamination Board shall notify the petitioner to designate within a specified time limit,and if no designation is made within the time limit,the appointment shall be deemed not to have been made.

(6)Where a party intends to appoint a citizen as his representative,the provisions governing the appointment of a patent agency shall apply mutatis mutandis.The scope of power for a citizen representative shall be limited to making observations and receiving documents in oral proceedings.

(7)The agent is required to submit a specially authorized power of attorney where:
(i)the agent of the patentee admits the petitioners request for invalidation;
(ii)the agent of the patentee amends the claims of the patent;
(iii)the agents reach a settlement;
(iv)the agent of the petitioner withdraws the request for invalidation.

(8)For other matters not described in the above,Chapter 1,Section 6.1 of Part I of these Guidelines shall apply mutatis mutandis.
 

QRequirement for Acceptance

A

(1)where the applicant is a foreigner,foreign enterprise or other foreign organization,the application shall be in conformity with the provisions of Article 19.1,and the country to which the applicant belongs shall be in conformity with the provisions of Article 18;

(2)where the applicant is an individual or enterprise or other organization of Hong Kong,Macao or Taiwan,the application shall comply with the provisions of Chapter 1,Section 6.1.1 of Part I.
 

QCircumstances of Nonacceptance

A

(1)where a foreign applicant is obviously not entitled to file an application for patent due to his nationality or its residence;

(2)where,as the first named applicant,a foreigner,foreign enterprise or other foreign organization without habitual residence or business office in Mainland China does not appoint a patent agency ;

(3)where,as the first named applicant,an individual,an enterprise or other organization from Hong Kong,Macao or Taiwan without habitual residence or business office in Mainland China does not appoint a patent agency ;

(4)where the application is mailed directly from a foreign country to the Patent Office;

(5)where the application is mailed directly from Hong Kong,Macao,or Taiwan to the Patent Office;
 

QSpecial Provisions on Examination of Electronic Application

A

(1)Power of Attorney

Any applicant who appoints a patent agency for applying for a patent,or for having other patent matters to attend to in electronic form,shall submit a power of attorney in electronic form and the original paper power of attorney.Any applicant who appoints a patent agency for handling formalities of reduction or postponement of the payment shall declare it in the power of attorney in electronic form.

Where the general power of attorney has been deposited with the Patent Office,if the serial number of that general power of attorney has been indicated in the request when filling the application or has been indicated in the statement when going through the formality for a change of bibliographic data,the patent agency shall be exempted from submitting the general power of attorney in electronic form and the photocopy thereof.

(2) Dissolution of Appointment and Resignation of Appointment

Where a patent agency has been appointed by the applicant of electronic application,at least one applicant shall be electronic application user when the formalities of dissolution or resignation of appointment are gone through.Where none of the applicants is the electronic application user,the formalities of dissolution or resignation of appointment shall not be gone through.The examiner shall issue the Notification that Request Deemed Not to Have Been Made and notify the party concerned to go through the formalities of Registration of Electronic Application User.

Where the formalities of dissolution are in conformity with the requirements,the applicant who has registered as electronic application user to go through the formalities shall be the representative of the patent application.

Where the formalities of resignation are in conformity with the requirements,the applicant who has registered as electronic application user and has been indicated in the request shall be the representative of the patent application.Where no representative has been designated,the first named applicant who has registered as electronic application user shall be the representative of the patent application.

(3) Changes due to Patent Agency Revoked

Where the patent agency appointed by the applicant is revoked by SIPO and the applicant appoints another patent agency,the new patent agency shall be the electronic application user.

Where the patent agency appointed by the applicant is revoked and the applicant does not appoint another patent agency,if the applicant is an individual or entity in mainland China and has registered as the electronic application user,the first named applicant shall be the representative.Where none of the applicants is the electronic application user,the examiner shall notify the applicant in paper form to go through the formalities of registration of electronic application user.According to Article 19.1 of the Patent Law,where the applicant is required to appoint a patent agency,the examiner shall notify the applicant to appoint a new patent agency which has registered as the electronic application user.
 

Fee
QHow much and when shall the petitioner pay the reexamination fee?

A

The petitioner shall pay the reexamination fee, within three months after the receipt of the rejection decision, which for an invention patent application is 1000 RMB, and for a utility model patent application or a design patent application is 300 RMB.

The petitioner may request for reduction or postponement of payment of the reexamination fee when he has difficulties in paying the fee. Where the request complies with the provisions of reduction and postponement, the petitioner may be approved with reduction or postponement of payment of the reexamination fee by some percentage, which is 60% for a patent application of service invention or 80% for that of a non-service invention.

If the petitioner has been approved with reduction or postponement of any patent-related fees by some percentage when filing the application or requesting for examination, he may be approved with reduction or postponement of payment of the reexamination fee by 60% for an patent application of a service invention or by 80% for that of a non-service invention.

For more information concerning reexamination fee please refer to the following website: http://www.sipo-reexam.gov.cn/scyfw/bszn/
 

QHow much and when shall the petitioner pay the fee for a request for invalidation?

A

The petitioner shall pay the fee for a request for invalidation, within one month from the filing date of the request, which for a request for invalidating an invention patent right is 3000 RMB and for a request for invalidating a utility model patent right or a design patent right is 1500 RMB. The fee for a request for invalidation cannot be reduced or postponed.

For more information concerning the fee for a request for invalidation please refer to the following website: http://www.sipo-reexam.gov.cn/scyfw/bszn/.
 

QHow shall the petitioner pay the reexamination fee or the fee for a request for invalidation?

A

The petitioner may pay the reexamination fee or the fee for a request for invalidation by one of the following methods:

(1) Paying directly to the Charging Office of the Patent Office of SIPO

(2) Paying online

The petitioner may pay the fees on line by registering to the Electronic Application System at the website http://www.cponline.gov.cn, logging on the system and following the requirements for using the system.
 
(3) Paying by postal remittance

Where the petitioner pays the fees by postal remittance, the remittee shall be the Charging Office of the Patent Office of SIPO, whose business customer number is 110000860.

(4) Paying by bank remittance

Where the petitioner pays the fees by bank remittance, the account number for receiving bank remittance is 7111710182600166032, the bank is Beijing Zhichun Lu Branch of Citic Bank, and the account name is Patent Office of State Intellectual Property Office of China.

When paying the fees by postal or bank remittance, the petitioner shall indicate clearly the application number or patent number, titles or abbreviations of the fees, and the amount for each kind of the fees. Otherwise, the payment shall be deemed not to have been made.

For more information concerning methods of paying the fees please refer to the website: http://www.sipo.gov.cn.
 

QHow can the petitioner confirm that the fee for reexamination or invalidation has been received after it is paid through bank? Will any voucher be provided?

AAfter the fee is paid through bank, the petitioner can inquire the fee at the Charging Office by telephone 010-6208 8166/5566. After the fee is received, an invoice will be provided by the Charging Office.

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