Written by Yapei YIN and Haoyu (Elliot) ZHOU

The deferred examination for Chinese patent prosecution has been available since 2019, but the relevant laws and regulations are not completed until 2023 when China National Intellectual Property Administration (CNIPA) officially published the <Patent Examination Guidelines> and <Implementing Regulations of Patent Law>. This article focuses on the current regulations of deferred examination and how to flexibly utilize these rules to create values for applicants.

I. Basic Rules for Deferred Examination

Deferred examination applies to all three types of Chinese patent applications. The specific rules are as follows:

1. Invention patent applications: The applicant can file a request for deferred examination concurrently with the request for substantive examination, and may choose a deferral period of 1, 2, or 3 years. There will be no other opportunity to file deferred examination apart from the time of requesting examination.

2. Utility model applications: The applicant can file a request for deferred examination concurrently with the filing of the utility model application. The deferral period is fixed at 1 year. There will be no other opportunity to file deferred examination apart from the time of filing the utility model application.

3. Design patent applications: The applicant can file a request for deferred examination concurrently with the filing of the design patent application, and may choose a deferral period ranging from a minimum of 1 month to a maximum of 36 months, calculated on a monthly basis. There will be no other opportunity to file deferred examination apart from the time of filing the design application.

It is worth noting that for invention patent applications, the deferred examination request only delays the “substantive examination” (i.e., it delays the date of receiving the first office action), but does not delay other related procedures such as payment deadlines, the date of entering examination stage, publication date, or the time limit for voluntary amendments. Therefore, even if an invention patent application will not be examined until after the deferral period, the claims must still be finalized no later than 3 months from the date of entering substantive examination; otherwise, the last opportunity for voluntary amendments will be missed.

No official fees are charged for deferred examination requests, and the deferral of examination take effect automatically upon request. For the convenience of applicants, the CNIPA has also published provisions to allow applicants to “withdraw deferred examination”. Specifically, applicants may at any time submit a declaration to withdraw the deferred examination request, and the application will be immediately returned to normal examination speed.

Currently, the deferred examination system applies not only to parent applications but also to divisional applications. However, it should be noted that the prolonged examination time resulting from deferred examination will not be counted toward patent term adjustment (PTA), as such is not the delay caused by the CNIPA.

II. How to Utilize the Deferred Examination System

1. Deferred examination can be used as an effective strategy for deferring publication of design patents and utility model patents. This is because design and utility model patents are only published after they are granted by the CNIPA. Therefore, applicants can leverage the deferred examination system to delay the publication of design and utility model patents by approximately 2-3 years, thereby maintaining a certain period of confidentiality.

That said, the deferral practice in design and utility model patent applications has drawn criticism from some practitioners. They argue that these deferred patents function like hidden landmines, which potentially harm public interests on the day when they are suddenly granted and come to light years later.

2. If an applicant is unable to determine how long the patent application should be deferred at early stage, we recommend opting for the maximum deferral period - for example, choosing a 3-year deferral for invention patent applications or a 36-month deferral for design applications - to fully benefit from the deferred examination. When the need to return to the normal examination cycle arises later, the applicant can always file a request to withdraw the deferred examination later to align with actual needs.

3. Another advantage of deferred examination is that it also effectively extends the timeframe for filing divisional applications. This effect is particularly significant for invention patent applications containing multiple embodiments. For example, for patent owners intending to file multiple divisional applications, requesting a 3-year deferral in the parent invention application can serve as a strategic approach for multiple divisional filings, allowing more divisional applications to be filed over a longer period of time, and thereby protecting multiple distinct embodiments.

4. If applicants miss the time to file deferred examination request but really wish to defer the examination, a potential remedy is that they may consider filing a divisional application while abandoning the parent application, and requesting deferred examination in the divisional application.

Alternatively, if still within the priority period, the applicant may consider filing a subsequent application claiming priority from the earlier application and requesting the deferred examination in the subsequent application.

III. Conclusion

Deferred examination is an important tool for patent owners to optimize prosecution strategy, enabling a deep alignment between patent examination progress and R&D, market competition, and business strategy. Applicants should have a basic understanding of these rules, rationally select deferral periods based on applicable scenarios, industry characteristics and portfolio needs, to achieve refined intellectual management that aligns with market demand for patented products.