Article 36 of the Chinese Patent Law stipulates: "When the applicant for a patent for invention requests examination as to substance, he or it shall furnish pre-filing reference materials concerning the invention. The applicant for a patent for invention who has filed in a foreign country an application for a patent for the same invention shall, at the time of requesting examination as to substance, furnish documents concerning any search made for the purpose of examining that application, or concerning the results of any examination made, in that country. If, without any justified reason, the said documents are not furnished, the application shall be deemed to have been withdrawn."
Rule 49 of the Implementing Regulations of the Chinese Patent Law also stipulates: "Where the applicant for a patent for invention cannot furnish, for justified reasons, the documents concerning any search or the results of any examination under Article 36 of the Patent Law, it or he shall make a statement to that effect and submit them when the said documents are available."
1. The materials the applicant shall submit for substantive examination
According to the abovementioned provisions, the materials the applicant shall submit, when making a request for substantive examination, shall include: the reference materials, the search materials and the materials of the results of the search.
Reference materials are those that, during the time when the inventor was completing his invention, the materials he referred to for the purpose of resolving the problems existing in the prior arts or for the purpose of resolving new problems met during his inventive activities; the reference materials further include the relevant materials obtained during the search he conducted before the date of filing to prove that his invention had novelty.
Search materials are those search reports made by foreign patent offices on the examination of applications for patent with the same topic as that of this application or those comparison documents cited during the examination.
The results of the examination are the observations, decisions on the examination, decisions on grant of patent, or decisions on rejection, issued by foreign patent offices on the prior applications after having examined same.
2. Variety and quantity of search materials or examination results that shall be submitted by the applicant
In principle, only one kind of the search materials and examination reports stipulated by Article 36 of the Chinese Patent Law shall be submitted, i.e., any one of the search reports, examination observations, decision on examination, decision on grant of patent, decision on rejection is enough.
Where the applicant has filed applications for patent in many countries, it is only necessary for him to submit the search materials or the search results of one or two main countries. For those PCT applications entering into the Chinese phase, as there are no international search reports for said PCT applications in the international stage, the applicant does not have to submit any.
3. The time limit for the applicant to submit the materials for the use of substantive examination
When requesting examination as to substance, if the applicant has already acquired the reference materials, search materials or examination results as stipulated in Article 36 of the Chinese Patent Law, he shall submit same at the same time when requesting substantive examination. Where the applicant is still not in possession of the search materials or examination results while making the request for substantive examination, he shall make a statement to the Chinese Patent Office about the situation and promise to submit them as soon as they are to hand, These materials shall be submitted within three months from the date of their acquirement. Where the applicant can not get the search materials or examination results in the foreign country where he filed the prior application (for example, the prior application was rejected before being examined), the applicant shall make a statement to the Chinese Patent Office explaining the circumstances when requesting examination as to substance.
For those applicants who can get the above materials but have not submitted same, the Chinese Patent Office will issue a written notice to said applicants, asking them to re-furnish or explain the reason why these materials are not submitted, the time limit is two months. Where the applicants fail to submit the necessary materials at the expiration of the specified two months without any justified reasons, said applications shall be deemed to have been withdrawn.
