Claiming Priority | China Patent Law Guide

Priority period

An applicant may also enjoy the right of priority where:

·???????they/it files an application with the CNIPA for a patent on the same subject within 12 months of the date on which an application for a patent for any invention or utility model is filed for the first time in a foreign country; or

·???????within 6 months from the date on which an application for a patent for a design is filed for the first time in a foreign country.

Said foreign country shall either have concluded a relevant agreement with China, or has joined the same international treaty (e.g. the Paris Convention), or agreed to the principle of mutual recognition with China, regarding the right of priority.

The time limit for claiming priority

An applicant claiming the right of priority to a patent for any invention or utility model shall make a written statement at the time of application, and within 16 months from the date on which an application is filed for the first time, submit a duplicate of the first-filed patent application documents.

An applicant claiming the right of priority over any design patent shall make a written statement at the time of application and submit a duplicate of the first-filed patent application documents within 3 months.

Where an applicant fails to make a written statement or submit a duplicate of relevant patent application documents within the prescribed time limit, it shall be deemed as not claiming the right of priority.

Procedures for claiming priority

Where the applicant claims a foreign priority, the copies of the prior application documents submitted by the applicant shall be certified by the original acceptance authorities. Where, according to the agreement signed between the CNIPA and the accepting authority is concerned, the CNIPA obtains copies of the prior application documents by means such as electronic exchange, and the copies of the prior application documents shall be deemed to have been submitted by the applicant. Where a domestic priority right is claimed and the applicant records the date and number of the prior application in the claim letter, copies of the prior application documents shall be deemed to have been submitted.

Where a priority right is claimed, but one or two items such as the date or number of the application or the title of the original acceptance authority are left out or recorded in error in the claim letter, the CNIPA shall notify the applicant that it must rectify the request within a specific time limit. Where the request has not been rectified before the time limit expires, it shall be deemed that no claim for a priority right has been made.

Where the name or title of the applicant claiming a priority right is inconsistent with that of the applicant recorded in the copies of the prior application documents, certified documents on the assignment of property rights shall be submitted. Where no certified documents are submitted, it shall be deemed that no claim for a priority right has been made.

Where the applicant for a design patent claims a foreign priority right, without having included a brief explanation of the design in the prior application, and they/it then submits a brief explanation that does not go beyond the scope indicated by the picture or photograph in the prior application documents, the applicant's enjoyment of the priority right shall not be prejudiced.

Multiple priorities

Applicants may claim one or more priorities in the same patent application. If two or more priorities are claimed, the priority term of the application shall be calculated from the date of the earliest priority.

Unfit for domestic priority

If an applicant claims a domestic priority and the Earlier Application is an application for an invention patent, an application for an invention or utility model patent may be filed regarding the same subject matter. If the Earlier Application is an application for a utility model patent, an application for a utility model or invention patent may be filed regarding the same subject matter. However, if the subject matter of such an Earlier Application is characterized by any of the circumstances set forth below when the later application is filed, the Earlier Application may not be taken as the basis for a claim for domestic priority. These circumstances are where:

• foreign or domestic priority has already been claimed;
• a patent right has already been granted; or
• the Earlier Application is a divisional application filed in accordance with regulations.

When an applicant claims domestic priority, his Earlier Application shall be deemed to have been withdrawn on the date on which the later application is filed.

(By?Dr. Jian Xu. Last updated: Mar 2023)

- This article is an excerpt from my E-book, 'China Patent Law Handbook: A Concise Reference Guide for Legal Professionals,' available on Amazon. You are welcome to check it out (and read it for free if you are a Kindle Unlimited subscriber).

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