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In the amended Patent Examination Guidelines effective since Feb 1, 2010, there are some changes to the provisions regarding priority, which have granted more chances for remedy to the applicant. The major changes are as follows:
1. Declaration Claiming Foreign Priority
Original Provision (Article 6.2.1.2 of Chapter 1, Part I of Guidelines):
The applicant shall…….indicate the filing date, application number of the previous application, and the name of the country or inter-governmental organization in which the application was filed; if the declaration fails to indicate or wrongly indicates the filing date of the previous application or the name of the country or inter-governmental organization in which the application was filed, the declaration shall be deemed not to have been made, and the examiner shall issue the Notification that Claim for Foreign Priority is Deemed Not to Have Been Made.
Amended Provision（Article 6.2.1.2 of Chapter 1, Part I of Guidelines）：
The applicant shall…….indicate the filing date, application number of the previous application, and the name of the original organization in which the application was filed; if the declaration fails to indicate or wrongly indicates one or two items among the filing date, application number and the name of the original organization before which the application was filed, but the applicant has submitted the copy of the previous application documents within the prescribed time limit, the examiner shall issue a Notification to Rectify Formalities. If the applicant fails to make any response within the time limit or the rectification is not in conformity with the relevant provisions, the examiner shall issue the Notification that Claim for Foreign Priority is Deemed Not to Have Been Made.
Analysis: According to the original Guidelines, priority will be deemed not to have been claimed if the declaration fails to indicate or wrongly indicates either the country or the filing date of the previous application, and the applicant has to handle the formalities to restore priority and pay restoration fees. Rectification is available only when the country and filing date of the previous application are correct but the application number is wrong. In the amended Guidelines, as long as any one item of the filing date, application number or country of previous application is correct and the copy of previous application documents is submitted, rectification is available without the need of handling restoration formalities. The restoration formalities are only required if the rectification is not in conformity with the relevant provisions or the response to the rectification is not made within the time limit.
2. Declaration Claiming Domestic Priority
Original Provision (Article 6.2.2.2 of Chapter 1, Part I of Guidelines):
The applicant shall indicate the date of filing and the application number of the previous application and the name of the country in which the previous application was filed (in this case, China). If the applicant fails to indicate or incorrectly indicates any of these matters, the declaration shall be deemed not to have been made, and the examiner shall issue the Notification that Claim for Domestic Priority is Deemed not to Have Been Made.
Amended Provision（Article 6.2.2.2 of Chapter 1, Part I of Guidelines）：
The applicant shall indicate the date of filing and the application number of the previous application and the name of original organization accepting the previous application (in this case, China). If the applicant fails to indicate or indicates wrongly one or two of these matters, the examiner shall issue a Notification to Rectify Formalities. If the applicant fails to make any response within the time limit or the rectification is not in conformity with the relevant provisions, the examiner shall issue the Notification that Claim for Domestic Priority is Deemed Not to Have Been Made.
Analysis: Similar to the situation regarding claiming foreign priority, in the original Guidelines, the filing date and the application number of the previous application must be indicated correctly (the country name will not be wrongly indicated because it is always China). If either of the foresaid two matters is wrongly indicated, the domestic priority will be deemed not to have been claimed and the applicant will have to handle the formalities to restore priority and pay restoration fees. In the amended Guidelines, as long as either the filing date or the application number is indicated correctly, rectification is allowed without the need of resuming formality. The restoration formality is only required if the rectification is not in conformity with the relevant provisions or the response to the rectification notification is not made within the time limit.
3. Previous Applications Claiming Domestic Priority
Original Provision (Article 6.2.2.1 of Chapter 1, Part I of Guidelines):
When the claim to the right of priority is examined, if it is found that the Notification of Grant of Patent Right for a previous application has been sent out by the Patent Office and the claim to the right of priority meets the necessary requirements, the applicant shall be required to return said notification in a timely manner. When the Patent Office receives the returned notification, the relevant fees that have been paid by the applicant shall be refunded.
Amended Provision (Article 6.2.2.1 of Chapter 1, Part I of Guidelines):
When the claim to the right of priority is examined, if it is found that the Notification of Grant of Patent Right for a previous application and the Notification of Handling Registration Formalities have been sent out by the Patent Office, and the applicant has completed the registration formalities, the examiner shall issue a Notification that Claim for Domestic Priority is Deemed Not to Have Been Made regarding the relevant application.
Analysis:
In the original Guidelines, if it is found during the examination of subsequent application that a Notification of Grant of Patent Right for a previous application has been sent out by the Patent Office, the Patent Office requires the applicant to return the Notification of Grant of Patent Right, which is troublesome and complicated for both the Patent Office and the applicant. In the amended Guidelines, it is unnecessary for the applicant to return such notification as long as the applicant does not handle the registration formalities for the previous application, which is easy and simple.
4. Restoration of Claim to Right of Priority
Original Provision (Article 6.2.5 of Chapter 1, Part I of Guidelines):
The applicant may request to restore the right to claim priority in any of the following circumstances:
(1) where the name of the country or inter-governmental organization, the filing date, and the application number of the previous application are filled correctly in the declaration claiming foreign priority and a copy of the previous application documents has been submitted within the prescribed time limit (in the amended Guidelines, this is a circumstance subject to rectification);
(2) where the application number of the previous application is correctly indicated in the declaration claiming the right of domestic priority and the fee for claiming the right of priority has been paid in full within the prescribed time limit (in the amended Guidelines, this is a circumstance subject to rectification);
(3) where the completed declaration claiming the right of priority is in conformity with the provisions, but the copy of the previous application documents or the document certifying the assignment of the right of priority has not been submitted within the prescribed time limit (in the amended guidelines, only one matter is required to be filled in correctly);
(4) where the original divisional application has claimed the right of priority; (not amended)
(5) where the completed declaration claiming the right of priority is in conformity with the provisions, but the fee for claiming the right of priority has not been paid or has not been paid in full within the prescribed time limit (in the amended guidelines, only one matter is required to be filled in correctly);
Amended Provision (Article 6.2.5 of Chapter 1, Part I of Guidelines):
The applicant may request to restore the right to claim priority in any of the following circumstances:
(1) the right of priority is deemed not to have been claimed because no response is made to the Notification of Rectification within the prescribed time limit;
(2) at least one item is filled correctly in the declaration of priority, but the copy of previous application documents or the certificate of transfer of priority is not submitted within the prescribed time limit;
(3) at least one item is filled correctly in the declaration of priority, but the fee for claiming the right of priority has not been paid or has not been paid in full within the prescribed time limit;
(4) priority is claimed in the original divisional application.
Analysis: It is obvious that two of the circumstances subject to restoration in the original Guidelines can now be rectified without restoration formalities in the amended guidelines. For the other two circumstances, the requirements for restoration are more flexible than those of the original Guidelines. In addition, a new circumstance is added to the amended Guidelines, namely where the applicant is allowed to rectify but the rectification is not in conformity with provisions.
The above-mentioned four changes demonstrate that the amended provisions on priority are more convenient for the applicant and grant more chances for rectification to the applicant. The relevant formalities are more humanized, which is also an important change in the recent amendments of the Patent law, implementing rules and examination guidelines.
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