In China, there are three kinds of patent: invention, utility model and design. Only invention patents are subject to substantive examination.
The requirements for patentability requirements are as follows.
All patent applications must first pass the patent eligibility bar:
Protection for a process or unknown type of material should be sought under an invention patent rather than a utility model.
‘Practical utility’ means that the invention or utility model can be made or used and can produce beneficial effects.
The disclosure and enablement requirements require that an invention or utility model be described in a manner that is sufficiently clear and complete so as to enable an ordinary person in the art to carry it out.
The absolute novelty bar applies in China. This means that an invention or utility model must not be part of any prior art in China or abroad, and must not have been described in any patent application previously filed in China (or Patent Cooperation Treaty (PCT) application valid in China).
‘Inventiveness’ implies that an invention or utility model must have prominent substantive features compared to the state of the art and must represent considerable progress. For a design patent, it must not be a prior design or conflict with any legal rights obtained by other parties before the filing date. Further, it must be significantly different from a prior design or a combination of prior design features.
For an invention or utility model, the claims must:
Some types of subject matter are legally excluded from patent protection, including:
Further, subject matter that is not reproducible, is contrary to natural law, is created by unique natural conditions or relates to a surgical method that is not intended for treatment purposes will be filtered out for lack of practical utility.
Software, programs, instructions, data, signals, logic and media carrying instructions are not patentable subject matter. Nevertheless, inventions that are implemented wholly or partially through software or software-related inventions can be patentable if they are intended to solve a technical problem, use technical means representing laws of nature rather than manmade rules and achieve technical effects – although hardware modifications or improvements are unnecessary. For example, inventions for use in controlling an industrial process or improving the performance or characteristics of a computer system are more likely to be allowed.
Attention should be paid to the product claim. The conventional method is to present a claim defining more than one functional component of the claimed product and, at the same time, provide a block diagram and detailed description showing the functions or actions of those components and indicate that each component may be implemented in hardware, software or a combination thereof. This approach may be unfavourable when it comes to litigation, because of the difficulty in identifying counterparts of the software components in the accused product.
Since last year, examiners have become more friendly to claims seeking to protect apparatus comprising a memory in which computer-executable instructions are stored and a processor configured to perform one or more actions upon the execution of the instructions. Such a form of claims used to be objected to by examiners on the ground that it is unclear or it lacks support from the description, but now it is a trend that examiners take an opener attitude towards such a form of drafting, and a decreased number of objections directed to the form of drafting has been observed.
Inventions covering business methods are not legally excluded from patentable subject matter. Nonetheless, they must have a technical nature (ie, advancing the prior art in terms of the structure, performance or characteristics of a computer or network). The simple computerisation of business methods or a simple improvement to a method of doing business not patentable. Examiners tend to review this type of invention for inventiveness rather than patent eligibility.
No,
Yes. An invention is not anticipated by:
No opposition procedure is available in China.
A third party may submit evidence and observations to the Patent Examination Division for consideration before an application is granted or may initiate invalidation proceedings with the Patent Re-examination Board at any time after grant. The submission of third-party observations is an ex parte procedure and no response will be received from the Examination Division. In contrast, invalidation proceedings involve inter partes review of the granted patent.
If a patent applicant is rejected, the applicant can ask the Patent Re-examination Board to overrule the rejection decision. Further, as stated above, in order to challenge a patent, the petitioner must initiate invalidation proceedings with the board. If the applicant or petitioner is not satisfied with the board’s decision, it can appeal to the IP Court in Beijing and then to the Beijing High Court to review the first-instance judgment. The second-instance decision is final, although a retrial before the Supreme Court is available.
On average, it takes 22 months from the start of the substantive examination for an invention patent application to be granted. Thus, the applicant may expect to obtain an invention patent approximately three years after filing if the request for substantive examination is filed in a timely manner. It may take approximately four months and three months from filing for grant of a utility model application and a design application, respectively.
In term of cost, if an invention patent application is around 5,000 words long in English, the total cost will be around $6,000 from filing to grant, including official and attorneys’ fees. A utility model or design application will cost between $1,000 and $1,500.
A court action is the most effective way for a patent owner to enforce its rights. By filing suit before the relevant court, the patent owner may obtain the remedies of preliminary injunction, permanent injunction and damages. Further, an administrative action is available, as the administrative authority for patent affairs may also handle a patent infringement dispute. The patent owner may obtain a permanent injunction through the administrative authority, but it cannot award damages. However, at the parties’ request, it may mediate in regard to the compensation due.
Once the patent owner has filed suit, the defendant has 15 days to respond or 30 days if it is a foreign party. The parties then may be given 30 days to file evidence and a court hearing follows. After the court hearing, the court issues its decision. The first-instance decision may be appealed to a higher court, and the second-instance decision is final.
There are more than 80 intermediate people’s courts and three IP courts with the power to handle patent infringement cases. Jurisdiction is typically determined by two factors:
As a strategy, the plaintiff may select a court away from where the defendant is located to avoid any influence by the defendant.
A defendant may delay proceedings for one to two months by filing a jurisdiction opposition petition. The plaintiff can do nothing to prevent this filing. The defendant may also request the court to stay the proceedings by filing an invalidation petition with the Patent Re-examination Board within the response term of a lawsuit. The court will generally stay the proceedings in cases involving a utility model or design patent. The plaintiff may provide evidence to the court to prove the validity of the patent at issue.
The courts in larger cities have more experience of patent cases. In Beijing, Shanghai and Guangzhou, patent-related cases are tried by IP courts. The judges in those courts usually have a high level of expertise.
Patent cases are usually decided by a panel of three judges, although a panel of five judges may sit in important cases. There is no jury system in China.
An expert witness may provide an affidavit to the court as evidence of the parties. The expert must be present in court to undergo cross-examination in order for his or her evidence to be considered by the court, unless there are extenuating circumstances. In some cases the court may request the parties to call certain experts to explain the technology at issue.
China applies the doctrine of equivalents. If a feature is not the same as a feature in the patented invention, but is implemented in substantially the same way and realises substantially the same function and effect, without requiring creative labour from a person skilled in the art, the feature will be regarded as an equivalent feature.
It is possible to obtain a preliminary injunction if:
Infringement issues are handled by the courts and validity issues are handled by the Patent Re-examination Board. A patent is presumed valid unless it is pronounced invalid by the board. The board’s decision as to whether a patent is valid may be appealed to the Beijing IP Court, whose decision may in turn be appealed to the Beijing High Court. The decision of the Beijing High Court is final.
In China, the court may grant a preliminary injunction, a permanent injunction and damages to the successful plaintiff.
A damages award may be calculated based on:
If the damages cannot be calculated easily, the court may award statutory damages of up to Rmb1 million ($147,000). At present, punitive damages are not available.
In most cases the courts will grant permanent injunctions to successful plaintiffs. The court will grant a permanent injunction if:
It takes six to nine months to obtain a decision at first instance if the parties are all Chinese companies or individuals. It is not possible to expedite this process.
The losing party in a first-instance case is always entitled to appeal. An appeal typically takes three to six months.
