1. provisions relevant to acceptance

It clarifies the acceptance procedures for applicants to submit missing claims or descriptions (utility model drawings) by citing prior application documents, including the conditions, and timing for applicants to submit declarations of incorporation by reference, and confirms the deadline requirements for submitting missing documents by citing prior applications, as well as the examination rules when the acceptance conditions are met or not met, etc.

2. provisions relevant to preliminary examination

The application of incorporation by reference in the preliminary examination of invention patent applications is further specified, the formalities related to incorporation by reference are standardized, and the specific examination rules are clarified. Supplementary application documents that can be submitted by citing prior application documents include (1) missing claims or descriptions; (2) claims or descriptions erroneously submitted, claims or part of the descriptions omitted or erroneously submitted. What should be particularly noted is that the content of the supplementary application documents shall be included in the copy of the prior application documents and their Chinese translations.

It clarifies the provisions relevant to the preliminary examination standards of utility model patent applications involving incorporation by reference applied to invention patent applications.

3. provisions related to substantive examination

It is clarified that during the stage of substantive examination, the "documents to be checked" should include application documents submitted by incorporation by reference. It is clarified that the content of incorporation by reference is part of the original application document.

4. regulations relevant to international applications entering the national phase

It refines the formalities that should be completed when an international application with incorporation by reference in the international phase or when some international applications enter the Chinese national phase, identifies the examination rules at the preliminary examination stage and accordingly deletes the reserved expression on provisions relevant to the PCT.

Interpretation of the revisions

The newly added Rule 45 of the Implementing Regulations provides a system of incorporation by reference that if the applicant omits or erroneously submits the claims or description, or part of the description or claims when applying, as long as priority is claimed for the application and the missing contents are presented in the priority text, the applicant may submit these contents by invoking the priority text within two months from the filing date or within the time limit specified by any relevant notice to make rectification issued by the CNIPA. If the submitted documents comply with the relevant regulations, the date of the initial submission shall be considered the filing date. The purpose of incorporation by reference is to allow the applicant, in certain conditions, to supplement the missing or correct contents into the application documents by invoking the prior application documents when the claims, description, or part of the application documents are omitted or erroneously submitted, thereby reserving the original application date.

The Examination Guidelines make further specifications on the relevant content, clarifying: (1) when submitting a patent application for the first time, the priority of the prior application should be claimed and a statement of incorporation by reference should be submitted; (2) the time limit for submitting a statement confirming incorporation by reference and related documents is within two months from the date of first submission of the patent application or within the time limit designated by the Patent Office; (3) the documents to submit include a statement confirming incorporation by reference, supplementary relevant documents, etc.

As for ordinary national applications, when the application documents lack claims or specifications (utility models without drawings), it is an event that shall not be accepted as stipulated in Article 44, Paragraph 1, Item (1) of the Implementing Rules of the Patent Law, therefore, when applicants supplement the above-mentioned documents via the incorporation by reference, the acceptance conditions should first be examined. For those qualified for the acceptance conditions, the Patent Office shall issue an acceptance notice and determine the filing date; for those who still fail to pass the examination of the acceptance conditions, a notification of document rejection shall be issued. Since the acceptance stage, only the relevant deadlines and whether the supplementary missing documents meet the acceptance conditions shall be examined, whether the supplementary application documents comply with the specific requirements for incorporation by reference will be examined in the preliminary examination stage. After preliminary examination, if it is considered that the requested priority does not comply with relevant provisions, or if it is confirmed that the statement of incorporation by reference, copies of prior application documents, and the Chinese translations do not meet the prescribed requirements of the Examination Guidelines, the application documents are substantially absent and the conditions for acceptance are not met, the Patent Office shall issue a notification of acceptance for revocation. If the content of the supplementary application documents submitted after rectification is still not included in the copy of the prior application document and its Chinese translation, and it complies with relevant provisions, the application date will be re-determined, and the date of the supplementary submission shall be considered the filing date.

In terms of the situation of "supplementing erroneously submitted claims and descriptions by invoking the prior application documents, or claims or part of the description omitted or erroneously submitted", since the relevant content does not involve the examination of acceptance conditions, the examination is conducted at the preliminary examination stage. For those that do not conform to the relevant provisions of the examination guidelines, a statement of incorporation by reference may be deemed not to have been submitted, or the filing date may be re-determined.

The divisional application does not apply to the system of incorporation by reference since it is not the first application.

As for international applications, the examination of incorporation by reference is mainly completed by the receiving Office during the international phase. However, when dealing with the procedures for entering the national phase, the applicant still shall submit Chinese translations of copies of the prior application documents related to incorporation by reference and other materials. During the national phase, if the examiner finds that the priority does not comply with relevant provisions or there is an obvious error in the receiving office's examination and approval for the incorporation by reference program or part, the applicant may choose to modify the filing date relative to China to retain the incorporation by reference program or part, or request not to amend the filing date relative to China but to delete incorporation by reference program or part. When the redetermination of the filing date causes the filing date to exceed twelve months from the priority date but within two months after the expiry of the priority deadline, the applicant may request restoration of priority.

It shall be noted that since the system of incorporation by reference is a remedy procedure provided for applicants, to avoid the situation of cumulative remedy, the inapplicable provisions are regulated in the Examination Guidelines.