China -  Chinese law firm

On the PCT patent application entering the Chinese phase, is it necessary for the applicant to supply comparison documents as provided in Article 36 of the Chinese Patent Law?

Item 2 of Article 36 of the Chinese Patent Law stipulates: "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 If, without any justified reason, the said documents are not furnished, the application shall be deemed to have been withdrawn."

For PCT international patent application entering the Chinese phase, the search results and examination materials during the international phase shall be provided, according to the provisions of the Patent Cooperation Treaty, by the International Bureau to the respective designated or selected offices. Therefore, the applicant of said international application, on entering the Chinese phase, does not have to submit the abovementioned materials.

Where the applicant has authorized a Chinese patent agency to handle the matter in the Chinese phase, however, the patent agent often demands to have the international search report (the title page will do). This is, as stipulated by the Chinese Patent Office, due to the bi-lateral agreements of the respective search offices, where the international search is done by the Japanese Patent Office, the Sweden Patent Office, or the European Patent Office, the fee for request for substantive examination of the international application concerned can be remitted. Therefore, the applicant is requested to submit the international search report to facilitate the patent agency to avoid making mistakes when handling the matter. The reason why the patent agency asks the applicant to supply the international preliminary examination report (copy) is also to be informed of the examination done during the international phase and whether the applicant has amended the application documents according to the provision of Article 34 of the Patent Cooperation Treaty, etc. It is best that the applicant could provide the patent agency with the amended document to reduce mistakes when handling the case. In addition, the Chinese Patent Office also stipulates that, during the examination procedure, where the examiner deems necessary, the applicant will be asked to supply the amendment materials or copy of the international preliminary examination report.

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