Provisions Concerning Implementation of Patent Cooperation Treaty in China
Chapter 1 General Provisions
Rule 1 These Provisions are formulated to implement the Provisions of the Patent Cooperation Treaty.
Rule
(1) "PCT" means the Patent Cooperation Treaty;
(2) "Regulations" means the Regulations under the Patent Cooperation Treaty;
(3) "Administrative Instructions" means the Administrative Instructions under the Patent Cooperation Treaty;
(4) "International Bureau" means the International Bureau of the World Intellectual Property Organization:
(5) "International application" means an international application for a Patent for invention or utility model filed under the PCT.
(6) "Patent Office" means the Chinese Patent Office:
(7) "Patent Law" means the Patent Law of the People's Republic of
(8) "Implementing Regulations" means the Implementing Regulation of the Patent Law of the Peoples' Republic of China.
(9) for the purposes of computing time limits, where the international application contains a priority claim, "priority date" means the filing date of the application whose priority is so claimed; where the international application contains several priority claims, the filing date of the ear1iest application whose priority is so claimed; or where the international application does not contain any priority claim, the international filing date of such international application.
Ru1e 3 The provisions of the PCT, the Regulations, the Administrative Instructions and these Provisions shall apply to the international application filed with the Patent Office or designating or electing China. The provisions of the Patent Law and the Implementing Regulations shall apply to the international application once the procedure has started before the Patent Office as the designated office or the elected Office, un1ess the PCT, the Regulations, the Administrative Instructions or these Provisions provide otherwise.
Chapter 2 Procedure Concerning Filing of the International Application
Rule 4 The Patent Office acting as a receiving Office shall receive the international application filed by any Chinese national or any foreigner, foreign enterprise or other foreign organization having habitual residence or business office in
In accordance with any agreement concluded between
Rule 5. The international application sha
Rule 6. The Patent Office shall accord as the international filing date the date of receipt of the international application filed in accordance with PCT Article 11(1).The second sentence of Article 28 of the Patent Law shall not apply to the determination of the international filing date.
Where it is found that the international application did not fulfill the requirements listed in PCT Article
If the international application refers to drawings which, in fact, are not inc1uded in that application, the Patent Office shall notify the applicant accordingly and he nay furnish them within 30 days from the date on which the incomplete papers were filed. If the drawings are so furnished, the international filing date shall be the date on which the drawings are received by the Patent Office; otherwise, any reference to the said drawings shall be considered non-existent.
Ru1e 7 When filing an international application with the Patent Office, the applicant may, as provided for in PCT Article 8, claim the priority of one or more earlier applications filed in or for any country party to the Paris Convention for the Protection of Industrial Property. Where such priority is claimed, the Provisions of PCT Rules 4.10 and 17.1 shall apply in so far as the formalities in relation to such priority claims are concerned.
Rule 8 If the Patent Office finds in the international application any of the defects referred to in PCT Article 14(1)(a), it shall invite the applicant to correct the international application as provided for in PCT Rule 26, fai1ing which the international application shall be considered withdrawn and the Patent Office shall so declare.
Chapter 3 Procedure Concerning International Search
Rule 9 The Patent office acting as an International Searching Authority shall carry out international search in respect of international applications in accordance with the provisions of the PCT, the Regulations, the Administrative Instructions, and the agreement concluded under PCT Article 1 6 (3) between the Patent Office and the International Bureau.
If the Patent Office considers
(i) that the international application relates to situations or to a subject matter which the Patent Office is not required, under PCT Rule 13ter.1(c) or 39, to search, and in the particular case decides not to search, or
(ii) that the description, the c1aims, or the drawings, fail to comply with the requirements of the Regulations to such an extent that a meaningful search cou1d not be carried out, it shall so dec1are and shall notify the applicant and the International Bureau that no international search report wil1 be established. If any of the situations referred to in (i) or (ii) mentioned above is found to exist in connection with certain claims only, the international search report shall so indicate in respect of such claims, whereas, for the other claims, the said report shall be established.
If the Patent Office considers that the international application does not comply with the requirement of unity of invention as set forth in PCT Rule 13, it shall invite the applicant to pay additional fees, as provided for in PCT Rule 40. The Patent Office sha
Rule 10 The Patent Office shall, within 3 months from the receipt of the search copy of the international application or within 9 months from the priority date, whichever time limit expires later, establish the international search report or make a declaration to the effect that no international search will be carried out.
Rule 11 The applicant has one opportunity to file with the International Bureau amendments to the claims of the international app1ication under PCT, Article 19, as provided for in PCT Rule 46. Such amendments shall be filed within 2 months from the date of transmittal of the international search report to the International Bureau and to the applicant by the Patent Office, or within 16 months from the priority date, whichever time limit expires later. However, any amendment made under PCT Article l9 which is received by the International Bureau after the expiration of the applicable time limit shall be considered to have been received by that Bureau on the 1ast day of that time limit if it reaches it before the technical preparations for international publication have been completed. Such amendments shall not go beyond the disclosure in the international application as filed.
Chapter 4 Procedure Concerning International Preliminary Examination
Rule 12 Any applicant whose international application has been filed with the Patent Office, and any person who is referred to in the agreement concluded between the Patent Office and the International Bureau for the purposes of international Preliminary examination, may file with the Patent Office a demand for internationa1 preliminary examination.
The demand for international preliminary examination shall be made in written form, in the language in which the international application was published, and shall be in conformity with the Provisions of PCT Rule 53.
The demand for international preliminary examination shall indicate at least one
Rule 13 The Patent Office acting as International Preliminary Examining Authority shall carry out international preliminary examination in respect of international applications in accordance with the PCT, the Regulations, the Administrative Instructions and the agreement concluded between the Patent office and the International Bureau under the PCT Article 32.
If the Patent office considers
(i) that the internationa1 application re1ates to situations or to a subject matter on which the Patent office is not required, under PCT Rule 66.2(a)(Vi) or (vii) or 67, to carry out an international preliminary examination, and in the Particular case decides not to carry out such examination, or
(iii) that the description, the claims, or the drawings, are so unclear, or the claims are so inadequately supported by the description, that no meaning1lil opinion can be formed on the novelty, inventive step (non-obviousness), or industrial applicability, of the claimed invention, it shall not go into the questions referred to in PCT Article 33(l) and shall inform the applicant of this opinion had the reasons therefore. If any of the situations referred to in (i) or (ii) mentioned above is found to exist in, or in connection with, certain claims only, the Provisions of the previous sentence shall apply only to the said claims.
If the Patent office considers that any of the situations referred to in PCT Rule 66.2(a) exists in an international application, it shall notify the applicant in writing and shall invite the applicant to submit a written reply. The applicant may respond to the invitation by making amendments or if he disagrees with the opinion of the Patent Office by submitting arguments, as the case may be, or do both. Such amendments shall not go beyond the disclosure in the internationa1 application as filed.
Where the Patent Office finds that an international app1ication does not comply with the requirement of unity of invention as provided for in PCT Ru1e l3, it shall proceed in accordance with PCT Article 34(3) and PCT Rule 68. The applicant may choose, at his own option, to restrict the claims or to pay additional fees. If the applicant fails to make the choice within the specified time limit, or if the applicant restricts the c1aims but not sufficiently to comply with the requirement of unity of invention, or if the applicant pays additiona1 fees but not sufficient to cover all additional inventions, the Patent Office shall establish an internationa1 preliminary examination report on those parts of the internationa1 app1ication which relate to what appears to be the main invention or to any additiona1 inventions for which additiona1 fees have been paid.
Rule 14 The applicant may, at the time when the demand for international preliminary examination is filed or before the international preliminary examination reports established, submit amendments to the Patent Office in respect of the claims, the description, and the drawings under PCT Article 34, as provided for in PCT Ru1e 66. Such amendments shall not go beyond the disclosure in the internationa1 application as filed.
Rule 15 The time 1indt for establishing the international preliminary examination report shall be:
(i) 28 months from the priority date, if the demand for international preliminary examination was received by the Patent Office Prior to the expiration of 19 months from the priority date;
(ii) 9 months from the start of the international preliminary examination, if the demand for international preliminary examination was received by the Patent Office after the expiration of l9 months from the Priority date.
Chapter 5 Procedure Concerning Designation and Election
Rule 16 An international application designating China shall, as of the international filing date accorded under PCT Article 11(1 ), have the effect of a Chinese national application for patent filed with the Patent Office on the same date.
Rule 17 Where the applicant of a-n international application designating China intends to seek the grant of a patent for utility model by the Patent Office, he shall so indicate in the request of his international application.'
Ru1e 18 Where the international Publication of an international application for a patent for invention designating China is effected by the International Bureau in accordance with PCT Article
Ru1e 19 Subject to Rule 20 of these Provisions, for an international application designating China which was filed in a language other than Chinese, the applicant shall furnish the Chinese translation of the international application to the Patent Office not later than the expiration of
Rule 20 Where the applicant of an international app1ication has elected China prior to the expiration of l 9 months from the Priority date, if that apPlicati0n was filed in a language other than Chinese, he shall furnish the Chinese translation of the international application to the Patent Office not later than the expiration of 30 months fr
Ru1e 21 The translation of the international application submitted by the applicant under Rule 19 or 20 of these provisions shall include the request, the description, the claims, any text matter of the drawings on a copy of the drawing and the abstract, all in two copies. Where amendments have been made to the claims in accordance with PCT Article l9, the translation shall also contain the amended claims and any statement made under that Aitic1e; where amendments have been made to the international application in accordance With PCT Article 34, the translation shall also contain any amendment annexed to the international preliminary examination report.
Where the applicant, while furnishing a translation of the international application referred to in the previous paragraph, fails to furnish, in respect of the amendments, a trans1ation both as originally filed and as amended, the Patent Office sha
Where the applicant furnishes only one copy of the translation, the Patent Office shall invite the applicant to furnish another copy within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation. Where the applicant fails to comply with the invitation, the international application shall be considered withdrawn.
Where the applicant does not furnish a translation of any statement made under Pry Article l 9, such statement shall be disregarded.
Rule 22 Where the international application has designated China, the app1icant may submit to the Patent Office amendments to the claims, the description and the drawings within one month from the Performance of the acts under Rule 19 of these Provisions, provided that, if the communication under PCT Rule 47. l has not been effected by the expiration of the time limit applicable under Rule l9 of these Provisions, the applicant may submit such amendments within 4 months from the expiration of that time limit. Such amendments shall not go beyond the disclosure in the international application as filed.
Rule 23 Where the international application elects China prior to the expiration of l9 months from the Priority date, the applicant may submit to the Patent Office amendments to the claims, the description and the drawings within one month from the performance of the acts under Rule 20 of these provisions, provided that, if the transmittal of the international preliminary examination report has not taken place by the expiration of the time limit as Provided for in Rule 20 of these Provisions, the applicant may submit such amendments within 4 months from the expiration of that time limit. Such amendments shall not go beyond the disclosure in the international application as filed.
Rule 24 Where some parts of an international application designation or electing China have not been searched or subjected to international preliminary examination because of lack of compliance with the requirements of unity of invention, the applicant shall pay a special fee as Provided for in PCT Article l7(3)(b) or 34(3)(b) within the time limit fixed by the Patent Office. If the fee is not paid or not paid in full within the said time limit, those parts of the international application relating to inventions which have not been searched or subjected to internationa1 preliminary examination shall be considered withdrawn.
Rule 25 Where, in accordance with the Patent Law and the Implementing Regulations, any documents and evidence under PCT Article 27(2) and (6) are required to be furnished to the Patent Office in respect of an international application designating or electing China, those documents and evidence shall be furnished before the expiration of the applicable time limit provided for in Rule 19 or 20 of these Provisions, failing which, the Patent Office shall invite the applicant to furnish them within the time limit specified in the invitation.
Ru1e 26 Where the international application designates China and claims the Priority of one or more earlier applications filed under the Patent Law, the provisions of Ru1e 33 of the Implementing Regulations shall apply.
Chapter 6 Fees
Rule
(1) the transmittal fee;
(2) the international fee, including the basic fee and the designation fees1
(3) the search fee and the additional search fee;
(4) the handling fee;
(5) the Preliminary examination fee and the additional preliminary examination fee;
(6) the confirmation fee;
(7) the late payment fee;
(8) any other fees as provided for in the Regulations.
The amounts of the fees mentioned in the preceding paragraph, the currencies in which they are Payab1e and the Permitted methods of payment shall be published by the Patent Office.
Rule 28 The applicant shall, within the time limit of one month from the date of receipt of the international app1ication by the Patent Office, Pay the transmittal fee, the basic fee and the search fee. If the said fees are not paid or not paid in fu
The applicant shall, within the time limit of one year from the priority date or one month from the date of receipt of the international application by the Patent Office, whichever expires later, pay the designation fee. If the said fee is not Paid or not paid in full within the applicable time limit, the Patent Office shall invite the applicant to pay, Within one month from the date of the invitat1on, the missing fees and the 1ate payment fee, failing which the designations concerned or, if no designation fee has been paid, the international application shall be considered withdrawn.
Where a designation is confirmed under PCT Rule 4, 9(c), the applicant shall pay the designation fee and the confirmation fee before the expiration of l5 months from the priority date.
The applicant shall pay the handling fee and the Preliminary examination fee when filing the demand for international preliminary examination with the Patent Office. If the said fees are not paid or not paid in fu
Where the international app1italion does not comply with the requirements of unity of invention, the app1icant shall pay the additional search fee and the additional preliminary examination fee within the ti1ne fixed by the Patent Office under PCT Rule 40.3 or 68.2.
Ru1e 29 Where an international app1ication designates or elects China, the applicant shall, within the time limit applicable under Rule 19 or 20 of these provisions, Pay the application fee. If the fee is not paid or no paid in full within the applicable time limit, the effect of an international application in
If, in respect of the international application designating or electing
Rule 30 Where an international application designating or electing China applies for the grant of a patent for invention, the applicant shall Pay a fee for the maintenance of the application f0r the third year before the expiration of 25 months from the filing date of the international application.
If the time limit specified in the previous paragraph expires earlier than the time limit applicable under Rule 20 of these Provisions, the applicant sha
Rule 31 For an international application designating or electing China, after the acts specified in Rule 19 or 20 of these Provisions have been performed, and the fees specified in the first paragraph of Rule 29 of these Provisions have been paid, unless otherwise Provided for in Rules 29 and 30 of these Provisions, the applicant shall pay the other fees in accordance with the provisions of the Patent Law and the Implementing Regulations.
Chapter 7 Other Provisions
Rule 32 For the fi1ing of an international application With the Patent Office, for the procedure before the Patent Office as the International Searching Authority or as the International Preliminary Examining Authority and as the designated Office or the elected Office as well as other matters related to the international application, the applicant shall appoint a patent agency designated by the Patent Office to act as his agent.
Rule 33 Any Chinese entity or individual intending to file an international application shall obtain the approval of the competent department concerned of the State Council.
Any Chinese entity or individual intending to file an international application may first file a national application with the Patent Office and. within 12 months from the filing date, file an international application designating or electing any other State party to the PCT, or file with the Patent Office directly an international application designating or electing China and any other State party to the PCT.
Rule 34 Where the receiving Office has refused to accord an international filing date or has declared that the international application is considered withdrawn, or where the International Bureau has made a finding under PCT Article l2(3), the applicant may, after having performed the acts specified in Rule 19 or 20 of these Provisions, and having paid the fees specified in the first paragraph of Rule 29
Rule 35 Where the effect of an international application designating or electing China ceases in China for having not performed the acts specified in Rule l9 or 20 of these Provisions and having not paid the fees specified in the first paragraph of Rule 29
Unless these Provisions provide otherwise, after the acts have been performed in accordance with Rule 19 or 20 of these Provisions and the fees paid in accordance with the first paragraph of Rule 29
Rule 36 Where an international application designating or electing China concerns a new microorganism, a microbiologica1 process or a product thereof and involves the use of a microorganism which is no available to the public, the applicant shall' at the latest, deposit on the filing date of the international application a sample
When the sample
Rule 37 The Chinese Patent Office sha
Rule 38 These Provisions shall enter into force on January 1, 1994.
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