Shouldn’t a Request for Prioritized Examination be Given Priority?

This post was published on September 17, 2014.


All applicants have a desire that their patent applications get prosecuted faster and their patents get a grant on priority, however, such desires are seldom fulfilled. Blame it on the backlog, if you will, and several other reasons for the delay, but patent applicants have to wait more than 3 years to get their patents granted.

Empathizing with the concerns of the applicant, several patent offices have devised procedures to expedite the prosecution of applications. Prioritized examination, accelerated examination, early examination are some of the provisions available to aid applicants in this pursuit. The most interesting among them is prioritized examination which aims to decide the fate of an application (refusal or grant) within 1 year of acceptance of request for prioritized examination.

In China, the measures specify that the following technologies will be considered for prioritized examination:

  1. Important patent applications relating to technical fields with respect to energy conservation, environment protection, new general information technology, biology, high end equipment manufacturing, new energy, new material and new energy automobiles;
  2. Important patent applications relating to technical fields for green developments. For ex: Low carbon emissions, conservation of resources;
  3. Important for national and public interest;
  4. Patent applications with the same subject matter as first filed in China and subsequently in other countries.

Such a request has to be filed electronically with the request for prioritized examination verified and signed by the regional IP office, search report issued by a legal entity qualified to undertake such a patent search by any patent office along with the translation of the report in Chinese.

SIPO aims to issue an examination report within 30 days of acceptance of request for prioritized examination. If the response to the examination report is not filed within 2 months of receipt of the examination report, then the request for prioritized examination is deemed to be withdrawn and the application will be treated as though a request was never made.

Interestingly, what drew attention was that in most countries, such as the US and China, the definition of important has not been given and this leaves many questions unanswered such as ‘who has the authority to determine the importance of a patent application’ and ‘whether the concerned authority’s power is appealable’. Doesn’t vesting so much power with one authority make the process arbitrary? Thus, which applications qualify to be examined on priority remains unanswered.

Without adequate guidelines regarding the determination of importance of patent applications, this process would lead to more confusion than benefit. The eligibility of subject matter for prioritized examination would be a tough choice and thus the authority chosen to make such a decision needs to be more careful than before.