Patent Prosecution

Patent prosecution refers to process of applying for a CN patent and having the patent examined by the State Intellectual Property Office (SIPO) of China. Broadly, patent prosecution can be split into pre-grant prosecution, which involves negotiation with the SIPO for the grant of a patent, and post-grant prosecution, which involves issues such as post-grant amendment and opposition.

There are many complex legal and technical requirements that must be fulfilled in order to obtain an issued patent. The rules and laws governing patent prosecution are laid out in the Guidelines for Examination of China.

It is important to note in advance that no one can guarantee that any patent claims will be allowed or a patent will be issued.

The patent prosecution phase can typically take 26 - 30 months from the filing date of the application for an invention patent, 6 - 8 months of a utility model and 4 - 6 months of a design, although it may be longer or shorter depending upon the circumstances.

After the patent application is drafted and filed with the necessary documents to the SIPO, it is assigned to one of over 5000 examiners at the SIPO, who will review the patent application and "examine" the application for its compliance with the patent law and rules.

The first substantial patent prosecution communication from the patent office is generally an "office action", in which the examiner is likely to make one or more statutory rejections of some or all claims, with an explanation of the legal basis for the rejection. The patent attorney normally reviews the office action, consults with the client about the reasons for the rejection, and prepares an ˇ°office action responseˇ± which may contain amendments to the claims and arguments in support of the application.

The cycle of office action and response may continue for several iterations during the patent prosecution until either the patent is allowed (allowance) or receives a final rejection.

Following a final rejection, the applicant has several options including filing a request for reexamination with the Patent Reexamination Board established in the SIPO. Ultimately, if the patent application is not allowed and the rejection is upheld, the application will be abandoned and the patent prosecution comes to an end.

If the patent prosecution of the application is successful, and the patent application is allowed, a notice of allowance is issued and the applicant is invited to pay the issue fee. Upon payment of the issue fee, the patent is formally approved.
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