To strengthen intellectual property protection, improve the quality and efficiency of intellectual property examination. The China National Intellectual Property Administration has taken a series of measures to crack down on abnormal patent applications and promote the quality of patents from the source.

On March 11, 2021, the China National Intellectual Property Administration announced (No. 411) that the Measures on Regulating Patent Applications provide a clear legal basis for combating and dealing with abnormal patent applications.

But in our daily work, we find that not only are applicants often confused about what constitutes abnormal patent application behavior, but even many agents of professional institutions cannot explain why. This undoubtedly brings considerable trouble to the applicant's patent application and even industrial layout.

So, in today's article, we will bring you the most comprehensive "Guidelines for Determining Abnormal Patent Application Behavior and Handling After Determination"

1、 What is abnormal patent application behavior?

Official definition

Abnormal patent application behavior refers to the act of any unit or individual, without the purpose of protecting innovation or based on real invention and creation activities, submitting various types of patent applications, agency patent applications, transferring patent application rights or patent rights separately or in conjunction for the purpose of seeking illegitimate benefits or fabricating innovation and service performance.

2、 What are the contents of abnormal patent application behavior?

（1） Simultaneously or sequentially submitting multiple patent applications with significantly identical or substantially different features or elements of the invention or creation, resulting in simple combinations and changes;

（2） The submitted patent application involves the fabrication, forgery, or alteration of invention and creation content, experimental data, or technical effects, or similar situations such as plagiarism, simple substitution, piecing together existing technology or designs;

（3） The invention or creation submitted in the patent application is clearly inconsistent with the actual research and development capabilities and resource conditions of the applicant or inventor;

（4） The invention and creation content of multiple patent applications submitted are mainly generated randomly using computer programs or other technologies;

（5） The invention or creation submitted in the patent application is intentionally formed to avoid patentability examination purposes and is obviously not in line with technical improvement or design common sense, or has no actual protection value, and is degraded, piled up, unnecessarily limited in protection scope, or has no search and examination significance;

（6） Submitting multiple patent applications that are essentially associated with specific units, individuals, or addresses in a dispersed, sequential, or remote manner in order to evade regulatory measures against abnormal patent application behavior;

（7） Not buying or selling patent application rights or patent rights for the purpose of implementing patented technology, design, or other legitimate purposes, or falsely changing inventors or designers;

（8） Patent agencies, patent agents, or other institutions or individuals who act as agents, inducers, instigators, helpers, or conspire with others to carry out various abnormal patent applications;

（9） Other abnormal patent applications and related behaviors that violate the principle of good faith and disrupt the normal order of patent work.

3、 Criteria for identifying abnormal patent application behavior

Abnormal patent application behavior can be identified from the following perspectives:

1. From the perspective of writing application documents

(1) Simultaneously or sequentially submitting multiple patent applications with significantly identical or substantially different features or elements of the invention or creation, resulting in simple combinations and changes;

(2) The submitted patent application involves the fabrication, forgery, or alteration of invention and creation content, experimental data, or technical effects, or similar situations such as plagiarism, simple substitution, piecing together existing technology or designs;

(3) The invention and creation content of multiple patent applications submitted are mainly generated randomly using computer programs or other technologies;

(4) The invention or creation submitted in the patent application is intentionally formed to avoid patentability examination purposes and is obviously not in line with technical improvement or design common sense, or has no actual protection value, and is degraded, piled up, unnecessarily limited in protection scope, or has no search and examination significance;

2. Determine from the perspective of the applicant's application behavior

(1) The invention or creation submitted in the patent application is clearly inconsistent with the actual research and development capabilities and resource conditions of the applicant or inventor;

(2) Submitting multiple patent applications that are essentially associated with specific units, individuals, or addresses in a dispersed, sequential, or remote manner in order to evade regulatory measures against abnormal patent application behavior;

(3) Not buying or selling patent application rights or patent rights for the purpose of implementing patented technology, design, or other legitimate purposes, or falsely changing inventors or designers;

3. Identifying from the perspective of the agent's agency behavior

Patent agencies, patent agents, or other institutions or individuals who act as agents, inducers, instigators, helpers, or conspire with others to carry out various abnormal patent applications;

4. Identify from other perspectives

Other abnormal patent applications and related behaviors that violate the principle of good faith and disrupt the normal order of patent work.

4、 Investigation and handling procedures for abnormal patent application behavior

（1） Investigation of abnormal patent application behavior

The China National Intellectual Property Administration found or learned clues in the procedures of patent application acceptance, preliminary examination, actual examination and reexamination or the international phase procedures of international applications, and in accordance with the Patent Law, its implementation rules, No. 411 Announcement and other laws and regulations, a special working group established by professional examiners in various fields was responsible for troubleshooting.

（2） Procedure for handling abnormal patent application behavior

1. The China National Intellectual Property Administration informs the local intellectual property management department

The China National Intellectual Property Administration, based on the investigation results, puts forward opinions on the preliminary determination of abnormal patent applications, and regularly informs the local intellectual property management department of the application number sheet involving abnormal patent applications.

2. The local intellectual property management department shall verify and notify the applicant or agent

After receiving the notification, the local intellectual property management department will conduct a verification and contact the applicant or agent based on the application number provided in the notification to notify them for subsequent disposal.

3. Disposal of the applicant or agent after receiving the notification

(1) Withdraw application

After receiving the notification, the applicant or agent may voluntarily withdraw the application by submitting a "Declaration on Withdrawal of Patent Application" to the China National Intellectual Property Administration within the specified time limit.

(2) Appeal

If the applicant or agent is dissatisfied with the preliminary determination of abnormal patent application behavior, they may submit a "Statement of Opinion (Regarding Abnormal Application)" within the specified period, stating their opinions and submitting supporting materials.

4. Follow up treatment of China National Intellectual Property Administration

(1) Handling of withdrawal of application by applicant or agent

After receiving the "Declaration of Withdrawal of Patent Application" submitted by the applicant or agent, the China National Intellectual Property Administration will issue a "Notification of Qualified Formalities" if it believes that the requirements are met, and the application will become invalid; If the China National Intellectual Property Administration believes that the requirements are not met, it shall issue a "Notice Deemed Not to Have Been Submitted" and explain the reasons. The applicant or agent may submit a revised "Declaration of Withdrawal of Patent Application" based on reasons that do not meet the requirements.

(2) Handling appeals from applicants or agents

After receiving the statement submitted by the applicant or agent, the China National Intellectual Property Administration will review the complaint materials and make further determination. If the China National Intellectual Property Administration believes that it is not an abnormal act of patent application, it will issue a "Special Letter for Examination of Business (to be normal)" and resume the normal approval process of the application case; If the China National Intellectual Property Administration still believes that the patent application is abnormal, it can issue a "Special Letter for Examination of Business (Abnormal)" or "Notice of Examination Opinion", and specify the time limit for withdrawing the patent application or the time limit for responding.

(3) Handling of applicants or agents who have not withdrawn their applications and have not submitted appeal materials within the specified deadline

The China National Intellectual Property Administration will issue a "Special Letter for Examination of Business (Abnormal)" and specify the time limit for withdrawal of the patent application or the time limit for reply.

5. Disposal of the applicant or agent after receiving the "Special Letter for Examination Business (Abnormal)"

(1) Withdraw application

After receiving the "Special Letter for Examination of Business (Abnormal)", the applicant or agent can voluntarily withdraw the application by submitting a "Declaration on Withdrawal of Patent Application" to the China National Intellectual Property Administration within the specified time limit.

(2) Reply to 'Review business specific letter (abnormal)'

The applicant or agent may submit a "Statement of Opinion (Regarding Abnormal Applications)" within the specified deadline, stating their opinions and submitting supporting materials.

6. Follow up treatment of China National Intellectual Property Administration

(1) Handling of withdrawal of application by applicant or agent

After receiving the "Declaration of Withdrawal of Patent Application" submitted by the applicant or agent, the China National Intellectual Property Administration will issue a "Notification of Qualified Formalities" if it believes that the requirements are met, and the application will become invalid; If the China National Intellectual Property Administration believes that the requirements are not met, it shall issue a "Notice Deemed Not to Have Been Submitted" and explain the reasons. The applicant or agent may submit a revised "Declaration of Withdrawal of Patent Application" based on reasons that do not meet the requirements.

(2) Handling of responses from applicants or agents

The China National Intellectual Property Administration reviews the statements and supporting materials submitted by the applicant or agent and makes further determination. If the China National Intellectual Property Administration believes that it is not an abnormal act of patent application, it will issue a "Special Letter for Examination of Business (to be normal)" and resume the normal approval process of the application case; If the China National Intellectual Property Administration still believes that it is an abnormal act of patent application, it may issue the "Office Action Notice" and specify the time limit for withdrawing the patent application or the time limit for responding.

(3) The handling of applicants or agents who have not withdrawn their applications and have not responded to the "special letter for examination business (abnormal)" within the specified deadline

The China National Intellectual Property Administration will issue a "deemed withdrawal notice".

7. Disposal of the applicant or agent after receiving the "Notice of Examination Opinion"

(1) Withdraw application

After receiving the "Office Action Notice", the applicant or agent may submit a "Declaration of Withdrawal of Patent Application" to the China National Intellectual Property Administration within the specified time limit to voluntarily withdraw the application.

(2) Reply to the "Notice of Review Opinion"

The applicant or agent may submit a "Statement of Opinion (Regarding Abnormal Applications)" within the specified deadline, stating their opinions and submitting supporting materials.

8. Follow up treatment of China National Intellectual Property Administration

(1) Handling of withdrawal of application by applicant or agent

After receiving the "Declaration of Withdrawal of Patent Application" submitted by the applicant or agent, the China National Intellectual Property Administration will issue a "Notification of Qualified Formalities" if it believes that the requirements are met, and the application will become invalid; If the China National Intellectual Property Administration believes that the requirements are not met, it shall issue a "Notice Deemed Not to Have Been Submitted" and explain the reasons. The applicant or agent may submit a revised "Declaration of Withdrawal of Patent Application" based on reasons that do not meet the requirements.

(2) Handling of responses from applicants or agents

If the China National Intellectual Property Administration considers that the applicant's statement of opinion and supporting materials are not convincing, it will issue a "decision of rejection". If the applicant is dissatisfied with the rejection decision, they may request a re examination from the Patent Office's Re examination and Invalidation Review Department within three months from the date of receiving the rejection decision.

(3) The handling of applicants or agents who have not withdrawn their applications and have not responded to the examination opinions within the specified deadline

The China National Intellectual Property Administration will issue a "deemed withdrawal notice".

5、 The consequences of identifying abnormal patent application behavior

（1） Identified abnormal patent application

1. The China National Intellectual Property Administration may not reduce patent fees depending on the circumstances; Those who have already reduced their fees are required to make up for the reduced fees.

For applicants with serious circumstances such as repeated violations, the patent fees for their patent applications will not be reduced within five years from the date of identifying abnormal patent application behavior.

2. Inform on the government website of the China National Intellectual Property Administration and China Intellectual Property News, and incorporate them into the national credit information sharing platform;

3. Deduct the number of abnormal patent applications from the statistics of patent applications of the China National Intellectual Property Administration;

4. Intellectual property bureaus at all levels will not provide funding or rewards; Those who have already been sponsored or rewarded shall be fully or partially recovered; For serious cases, no funding or rewards will be given for five years from this year onwards.

（2） Patent agencies or patent agents who engage in abnormal patent application behavior

The All China Association of Patent Agents shall take self-discipline measures. If the circumstances are serious, such as repeated violations, the China National Intellectual Property Administration or the department in charge of patent work shall punish according to law.

（3） Other institutions or individuals engaged in abnormal patent application behavior

The department responsible for managing patent work shall impose penalties in accordance with relevant regulations on investigating and punishing unqualified patent agency behavior. Those who violate other laws and regulations shall be transferred to relevant departments for handling in accordance with the law.

（4） Suspected of constituting a crime

Units or individuals who engage in abnormal patent applications and are suspected of constituting a crime under the Criminal Law of the People's Republic of China shall be transferred to relevant authorities for criminal responsibility in accordance with the law.

Source: Official document of China National Intellectual Property Administration