Since November 1, 2019, deferment examination has already taken effect in China.  In particular, the deferment request must be filed at the same time of filing the request for substantive examination, and the period for postponing the examination can be 1 year, 2 years or 3 years.  However, in the practice, we found many applicants may pay much less attention on this prescription or may not fully take advantage of it. 

In some cases, when we report to our client its application is expected to be granted a patent right soon, the client may instruct us to postpone the grant of the application due to some commercial purposes.  At this time, what we can do is only to file an extension request for response (which is two months maximum) and/or conducting the restoration procedure by failing to respond to the notification by the deadline, but by doing these, we may only can postpone the response by around six months maximum.

Therefore, if the applicant can predict the importance of its patent applications and may be confident for its granting prospect, the applicant can use the deferment request when filing the request for substantive examination to confuse its competitors, prevent them from knowing the final protection scope of patent protection in a timely manner, and thus let them fail to develop similar products in advance.

Furthermore, unlike in other countries, in China, there are strict limitations on filing a divisional application.  In particular, the divisional application must be filed before the conclusion of its parent application unless the Examiner indicates the unity issue during the examination for the early divisional application, and then the applicant can file a further divisional application(s) before the conclusion of this early divisional application.

Therefore, in order to retain the opportunity to file new divisional applications, the applicant may hope to cause unity issue during the examination of the early divisional application, but it has great uncertainty.  If we failed, the applicant will lose the last opportunity to file another divisional application. 

The deferment examination will give the applicant more time to consider the scope of protection of its application, and the applicant can combine the request for deferment examination with the divisional strategy to achieve the purpose of retaining the opportunity to file a new divisional application and try different defense strategies as long as possible.

In addition, we found some applicants want to file the PPH (Patent Prosecution Highway) based on the claims which have a great opportunity to be granted a patent right in other patent offices which has set up PPH programs with the Chinese Patent Office.  However, it is uncertain when the claims will be finally granted in other patent offices, therefore, the applicant hoped to file a deferment request for its application in China, and thus deferment the deadline of voluntary amendments, thereby having more time to prepare the claims in China to sufficiently correspond to the claims finally granted in other patent offices.  

For this, please be informed that, the deferment request is made only to postpone the examination procedure, and it cannot defer the deadline for voluntary amendments.  The last chance for the applicant to make the voluntary amendment is still within three months after receiving the Notification of Entering into Substantive Examination Stage from CNIPA (China National Intellectual Property Administration).

Last, please note that, once a deferment request is made, it cannot be withdrawn or request CNIPA to start substantive examination before the required period expires.