Priority restoration procedure in China

On December 21, 2023, the revised "Regulations for the Implementation of the Patent Law of the People's Republic of China" was officially implemented, which formally introduced priority relief procedures including priority restoration and correction to be consistent with the relevant rules of international applications.

Restoration of priority

Article 36 and Article 128 of the Implementing Rules stipulate the conditions for restoring the priority right of invention or utility model applications and PCT applications entering the Chinese national phase through the Paris Convention route, respectively.

For inventions or utility models filed under the Paris Convention, Article 36 provides that "if an applicant files an invention or utility model patent application with the State Council Patent Administration Department for the same subject matter beyond the time limit prescribed in Article 29 of the Patent Law, and has legitimate reasons, he may request restoration of the right of priority within two months after the expiration of the time limit."

The Patent Examination Guidelines (2023) stipulates: "If the priority period of 12 months from the filing date of the prior application expires and the subsequent application is filed before the Patent Office is ready to publish it, the applicant may request restoration of priority within 2 months from the expiration of the priority period."

Therefore, for inventions or utility models filed through the Paris Convention, the time conditions for applicants to request restoration of priority rights are:

• Within 2 months from the expiration of the 12-month priority period
• Before the patent office is ready for publication.

For patent applications that enter the Chinese national phase under the PCT, Article 128 of the Implementing Rules provides that: "If the filing date of the international application is within 2 months after the expiration of the priority period, and the receiving office at the international stage has approved the restoration of the priority right, it shall be deemed that the applicant has filed a request for restoration of the priority right in accordance with Article 36 of the Implementing Rules; if the applicant has not requested restoration of the priority right during the international phase or the receiving office does not approve the request, the applicant may, if there are legitimate reasons, request restoration of the priority right to the patent administration department of the State Council within 2 months from the entry date."

Correction priority

Article 37 of the Implementing Regulations provides that: "If an applicant for an invention or utility model patent application claims priority, he or she may request to add or correct the priority claim in the application within 16 months from the priority date or within 4 months from the filing date."

The Patent Examination Guidelines (2023) stipulates: "If an applicant requests to add or correct a priority claim, he or she shall make a priority request when filing the application and submit a request to add or correct the priority claim within the prescribed time limit; if he or she requests to add a priority claim, he or she shall pay the priority request fee at the same time."

Therefore, as long as the applicant claims at least one priority when submitting an invention or utility model application, he or she may file a request for correction of priority or an increase of priority within 16 months from the priority date or within 4 months from the application date.

It should be noted that the provisions of Articles 36 and 37 of the Implementing Regulations cannot be used together. For example, if the priority right has been restored in accordance with the provisions of Article 36 of the Implementing Regulations, the priority claim cannot be added or corrected in accordance with the provisions of Article 37. Articles 36/128 and 37 cannot be applied at the same time as Article 45. In other words, if the situation falls under the provisions of Articles 36/128 and 37, Article 45 does not apply, and vice versa.