Patent Procurement

Forms

  - Legal Basis
  - Language
  - Types of Patent
  - Patent Duration
  - Definition of Invention / Utility Model and Design
  - Unpatentable Subject Matters
  - Patentability of Biological Material
  - Patentability of Computer Software
  - Patentability of New Plant Varieties
  - Novelty
  - Inventiveness
  - Conventional Priority
  - Domestic Priority
  - Entry of PCT Applications
  - First-to-File Rule
  - Filing Documents
  - Claim Format
  - Publication
  - Substantive Examination
  - Duty of Information Disclosure
  - Unity Requirement
  - Filing of Divisional Application
  - Multiple Dependent Claim
  - Amendment of Application
  - Rejection and Appeal
  - Invalidation
  - The Power of the Patent Re-examination Board
  - The Scope of Patent Protection
  - Right of Prior User
  - Maintenance Fee and Annuity
  - Representation
  - Assignment and License Contract
  - Marking

Patent Procurement

Legal Basis

On April 1, 1985, the Chinese Patent Law entered into effect. It was revised on September 4, 1992 for the first time and the revised law became effective on January 1, 1993. On August 25, 2000, it was revised again and the revised law came into force on July 1, 2001.

China became a member of the World Intellectual Property Organization (WIPO) on June 3,1980. On March 19, 1985, China acceded to the Paris Convention for the Protection of Industrial Property (Stockholm Act). China became a member of the Patent Cooperation Treaty (PCT) on January 1, 1994 and a member of the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure on July 1, 1995. China entered into the Locarno Agreement Establishing an International Classification for Industrial Designs on September 19, 1996 and the Strasbourg Agreement Concerning the International Patent Classification on June 19, 1997. China became a member state of the International Convention for the Protection of New Varieties of Plants (1978 Act) on April 23, 1999.

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Language

All filing documents and formal communications with the State Intellectual Property Office (SIPO) and the Patent Re-examination Board must be in Chinese.

Types of Patent

There are three types of patent, i.e. patent for invention, patent for utility model and patent for design.


Patent Duration

The duration of patent for invention is twenty years, the duration of patent for utility model and design is ten years, counted from the filing date in China.


Definition of Invention / Utility Model and Design

Invention means any new technical solution relating to a product, a process or improvement thereof.

Utility model means any new technical solution relating to the shape, the structure, or their combination of a product, which is fit for practical use.

Design means any new design of the shape, the pattern or their combination, or the combination of the color with shape or pattern of a product, which creates an aesthetic feeling and is fit for industrial application.

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Unpatentable Subject Matters

No patent right shall be granted for any of the following subject matters:

      1.      Scientific discoveries;
2.      Rules and methods for mental activities;
3.      Methods for the diagnosis or for the treatment of diseases;
4.      Animal and plant varieties;
5.      Substances obtained by means of nuclear transformation.

For processes used for producing products referred to in item (4), patent may be granted.

Patentability of Biological Material

Biological material (Microorganisms) per se is patentable. Where an application for invention concerns a new biological material which is not available and which cannot be described in the application in such a matter as to enable the invention to be carried out by a person skilled in the art, the applicant shall deposit a sample of the biological material with an international depository authority (IDA) under the Budapest Treaty before the date of filing, or, at the latest, on the date of filing (or the priority date, where priority is claimed), and submit, at the time of filing, or, at the latest, within four months from the filing date, a receipt of deposit and a viability proof from the depository authority.


Patentability of Computer Software

Computer software per se is not patentable. However, computer software may be protected under the Copyright Law, and, may also be protected under the Patent Law if it belongs to a technical field, resolves a technical problem and reaches a technical result.

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Patentability of New Plant Varieties

New plant varieties per se are not patentable. However, new plant varieties may be protected under the Regulations on the Protection of New Plant Varieties enforced on October 1, 1997. The term of protection of new plant varieties, counted from the date of grant thereof, shall be 20 years for vines, forest trees, fruit trees and ornamental plants and 15 years for other plants, subject to the payment of annual fees.


Novelty

An invention or utility model is novel if, before the filing date, no identical invention or utility model has been disclosed in publications anywhere in the world, or has been publicly used or made known to the public by any other means in China. Novelty is destroyed by an application, filed earlier by other person that describes an identical invention or utility mode and is published by the State Intellectual Property Office after the filing date of the said invention or utility model.

A design is novel if it is not identical with and similar to any design, which, before the filing date, has been publicly disclosed in publications anywhere in the world or has been publicly used in China, and must not be in conflict with any prior right of any other person.

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Inventiveness

An invention possesses inventiveness if, compared with the technical solutions existing before the filing date, the invention has prominent substantive features and represents a notable progress.

A utility model possesses inventiveness if it has substantive features and represents progress.

There is no inventiveness requirement for design patent.


Conventional Priority

Conventional priority for patent applications for invention and utility model can be claimed within twelve months from the date of first filing outside China. Conventional priority for patent applications for design can be claimed within six months from the date of first filing outside China. Priority documents must be submitted to the State Intellectual Property Office within three months from the date of filing in China.

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Domestic Priority

Domestic priority for patent applications for invention and utility model can be claimed within twelve months from the date of first filing in China. Where the subject of an earlier application for invention or utility model falls under any one of the following circumstances, it may not be taken as the basis for any later application for invention or utility model to claim for a domestic priority:

      1.      where it has claimed foreign or domestic priority;
2.      where it has been granted a patent right;
3.      where it is a divisional application.

The earlier application shall be deemed to have been withdrawn when a new application claiming domestic priority is filed.


Entry of PCT Applications

A PCT application should enter into Chinese national phase within 30 months from the priority date.

If the applicant for a PCT application fails to go through the relevant formalities for entering the Chinese national phase within 30 months from the priority date, he may, after paying a surcharge for the late entry, go through these formalities before the expiration of the time limit of 32 months respectively from the priority date.

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First-to-File Rule

The Patent Law adopts a first-to-file rule. Where two or more applicants file patent applications for the identical invention, utility model or design, the patent right shall be granted to the applicant whose application was filed first.


Filing Documents

Each application for invention or utility model must include the following documents:

      -         Power of Attorney, signed by the applicant (Notarization or legalization is not required);
-         Specification with claims and abstract;
-         Drawings, if any (two sets of formal drawings);
-         Certified copy of the prior application, if a priority is claimed; and
-         Assignment of priority right, if the applicant in China differs from that of the prior application.

Each application for design must include the following documents:

      -         Power of Attorney, signed by the applicant (Notarization or legalization is not required);
-         Drawings or photographs of the design, in triplicate (min. 3×8cm, max. 15×22cm);
-         Certified copy of the prior application, if a priority is claimed, and
-         Assignment of priority right, if the applicant in China differs from that of the prior application.

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Claim Format

"European" claim format, which contains a preamble portion defining the technical features of the prior art and a characterizing portion defining the technical features of the invention, is highly recommended for independent claims.


Publication

Patent application for invention is published promptly after expiration of eighteen months from the filing date or the priority date, whichever is earlier, after the preliminary examination.


Substantive Examination

Patent application for invention is examined as to the substance. In order to initiate the substantive examination procedure, applicant must submit a formal request within three years from the Chinese filing date or the priority date, whichever is earlier. Otherwise, the application shall be deemed to have been withdrawn.

Patent application for utility model and design is not examined as to the substance. Patent will be issued automatically after preliminary examination.

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Duty of Information Disclosure

When the applicant of a patent application for invention requests substantive examination, he shall provide pre-filing date reference materials concerning the invention. The State Intellectual Property Office may ask the applicant to furnish any search reports and examination results issued by foreign patent authorities, such as EPO, USPTO and JPO, during the examination of the corresponding foreign applications.


Unity Requirement

A patent application for invention or utility model shall be limited to one invention or utility model. Two or more inventions or utility models may be filed in one application, provided that they belong to a single general inventive concept, that is to say, they shall be technically interrelated and contain one or more identical or corresponding special technical features. The expression "special technical features" shall mean those technical features that define a contribution which each of those inventions, considered as a whole, makes over the prior art.

A patent application for design shall be limited to one design incorporated in one product. Two or more designs, which are incorporated in products belonging to the same class and are sold or used in sets, may be filed in one application. The expression "the same class" means that the products incorporating the designs belong to the same subclass in the classification of design. The expression "be sold or used in sets" means that the products incorporating the designs have the same designing concept and are customarily sold or used at the same time.

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Filing of Divisional Application

A divisional application can be filed by the applicant before the expiration of two months from the date of receipt of the notification to grant the patent right. However, where an application for patent has been rejected, withdrawn or deemed to have been withdrawn, no divisional application can filed.

Multiple Dependent Claim

A multiple dependent claim, which refers to two or more claims, shall refer to the preceding one in the alternative only, and shall not serve as a basis for any other multiple dependent claims.

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Amendment of Application

Amendment of patent application is allowed, but may not go beyond the scope of original disclosure in the initial description and claims.

For patent application for invention, applicant may amend its application on its own initiative when the request for substantive examination is submitted, or within three months from the date of receipt of the notification from the State Intellectual Property Office informing the entry of the application into the stage of substantive examination.

For applications of utility model and design, applicants may amend the applications on their own initiative within two months from the filing date.


Rejection and Appeal

If a patent application is found to be unacceptable by the State Intellectual Property Office, and the applicant has been given at least one opportunity to make a response, a final rejection shall be made.

The rejection made by the State Intellectual Property Office can be appealed to the Patent Re-examination Board.


Invalidation

Anyone may request the Patent Re-examination Board to declare a patent invalid from the date of announcement of the grant of the patent right.

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The Power of the Patent Re-examination Board

Decision made by the Patent Re-examination Board on the patentability of patent application for invention, utility model and design, as well as on the validity of patent for invention, utility model and design can be appealed to court, within 3 months counted from the date on which the notification from the Patent Re-examination Board is served.


The Scope of Patent Protection

The scope of protection of the patent for invention or utility model is determined by the terms of the claims. The description and the appended drawings may be used to interpret the claims.

The scope of protection of design is determined by the product incorporating the patented design as shown in the drawings or photographs.

After the grant of the patent right for an invention or utility model, the patentee has the right to prevent others from making, using, offering to sell, selling or importing the patented products, or using the patented processes, or using, offering to sell, selling or importing the product directly obtained by the patented processes, for production or business purposes and without his authorization.

After the grant of the patent right for a design, the patentee has the right to prevent others from making, selling or importing the product incorporating patented design, for production or business purposes and without his authorization.

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Right of Prior User

It is not an infringement if, before the filing date of a patent application, a person has already made an identical product, used an identical process, or made necessary preparations for producing an identical product or using an identical process, and this person continues to make the product or use the process within the original scope only, after the patent for another person is issued.


Maintenance Fee and Annuity

From the third year after the filing of a patent application for invention and before it is granted a patent right, the applicant is required to pay for the maintenance fee. However, maintenance fee is not due until the applicant receives the notification to grant the patent right. Payment of the accumulated maintenance fees should be made within two months from the date of receipt of the notification.

The first annuity shall also be paid within two months from the date of receipt of the notification to grant the patent right. The subsequent annuities shall be paid in advance within the month before the expiration of the preceding year.

Grace period for paying the annuities is six months.

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Representation

Foreign entities and individuals having no permanent residence or business office in China must be represented by an authorized Chinese patent firm in patent prosecution and other proceedings before the State Intellectual Property Office and the Patent Re-examination Board.


Assignment and License Contract

Where a patent or patent application is assigned, there must be a written contract and it must be recorded with the State Intellectual Property Office. The assignment shall come into force after it is recorded.

Any license contract shall, within three months from the date of coming into force, be submitted to the State Intellectual Property Office for the record.

Any assignment of patent or patent application to a foreigner by a Chinese entity or individual must be approved by competent government authorities.

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Marking

Marking is not compulsory, but recommended. Patent application number or patent number should be indicated on the products.