Exploring the Delayed Examination Mechanism in Chinese Patent Applications: An Invisible Shield for Innovators

During the patent application process, applicants often hope to expedite the examination process and obtain patent certificates quickly. Various countries have their own procedures for expediting patent examinations, such as the USPTO's Track One program, Patent Prosecution Highway (PPH), and PACE in the European patent application process.

However, in reality, in some cases, applicants may wish to postpone examination and publication to meet their specific needs. The Patent Examination Guidelines implemented by the State Intellectual Property Office of China in 2019 introduced for the first time a mechanism for delayed examination of invention and design patent applications, and added provisions for delayed examination of utility model patent applications:

• If the applicant submits a request for delayed examination at the same time as filing a utility model patent application, the application can be delayed for one year from the date of the request for delayed examination.
• The delayed examination regulations for design patents are in months, and can be delayed for up to 36 months, calculated from the effective date of the delayed examination request.
• The applicant may also withdraw the request for deferred examination. That is, before the deferred examination expires, the applicant may withdraw the request. If the requirements are met, the deferred examination period will end and the patent application will be examined in the normal order.

The benefits of delayed review are:

By deferred examination, applicants can gain more time to amend their claims based on the latest technological advances, market competition, and changes in the standardization process, thereby making the scope of patent protection more precise and targeted. Furthermore, applicants can use this method to confuse and intimidate competitors, forcing them to remain indecisive, thereby gaining valuable competitive time, continuously widening the gap between their own products and those of their competitors, and ultimately winning the market.

Delayed examination also provides applicants with the opportunity to benefit from the latest patent examination policies, such as supplemental experimental data, computer storage media, and program product protection. Applicants can decide whether to proceed with patent examination based on the market conditions of their products, thereby avoiding unnecessary patent examination costs.

For design patents, by making reasonable use of delayed examination, the design can be disclosed after the relevant product is on the market/released, so as to avoid the design details being exposed too early before the product is released and prevent competitors/imitators from copying the design.

Are there any official fees for delayed review?

• There is no official fee for requesting a deferred hearing.

Who is eligible to request a delayed examination, and when can a request for a delayed examination be made?

• A request for deferred examination of a patent application should be submitted by the applicant. A request for deferred examination of an invention patent application must be submitted at the same time as a request for substantive examination. For design patents and utility models, a request for deferred examination must be submitted when the new application is filed.

How long is the delayed review period?

• The deferred examination of an invention patent application will be delayed for 1-3 years from the effective date of the deferred examination request.
• The examination of utility models can be delayed for up to one year.
• The unit of delay for design examination is months, and the longest delay is 36 months.

How do I withdraw a request for delayed examination?

• Before the expiration of the deferred examination period, the applicant may withdraw the request for deferred examination. If the requirements are met, the deferred examination period will end and the patent application will be examined in order.

Companies should actively analyze their own market strategies and patent protection needs to ensure that their innovations can be most effectively protected within the legal framework.