Patents in China

Patent Filing in China

Patent filing in China is governed by the Patent Law of The People’s Republic of China, 1984; amended in 1992, 2000 and 2008. A patent is granted for creations, including inventions, utility models, and designs. China grants patents on a first-to-file basis.

For an application to be successful, the invention or utility model must possess following:

1. Novelty,
2. Inventiveness; and
3. Practical applicability.

Novelty means that, before the date of filing, no identical invention or utility model has been publicly disclosed in publications in the country or abroad or has been publicly used or made known to the public by any other means in the country, nor has any other person filed previously with the Patent Office an application which described the identical invention or utility model and was published after the said date of filing.

Inventiveness means that, as compared with the technology existing before the date of filing, the

invention has prominent substantive features and represents a notable progress and that the utility

model has substantive features and represents progress.

Practical applicability means that the invention or utility model can be made or used and can produce effective results.

The three types of patents granted in China are:

1. Regular Invention Patent

As in Europe, in China an invention patent is granted for new technical solutions or improvements to a product or process, provided that the technical solutions have a practical applicability.

Invention requirements:

• Must be novel;
• Must not have been used before filing;
• Must not have been previously published;
• Industrially Applicable.

Normally granted within 3-5 years and gives protection up to 20 years from the filing date (or priority date if priority is claimed) subject to the payment of annuity fees.

Utility Model Patents

Utility Model Patents (UMs) are very similar to invention patents; however this type of patent only protect products with new shape or structural physical features.

Protection Requirements:

• Must be novel;
• Must not have been used before filing;
• Must not have been previously published;
• Industrially Applicable.

Normally, granted within 1 year and gives protection up to 10 years from the filing date (or priority date if priority is claimed) subject to the payment of annuity fees.

Design Patents

An application for a design patent includes any of the following external features of a product:

• The shape of a product;
• The pattern of a product;
• The shape and pattern of a product;
• The shape and colour of a product;
• The shape, pattern and colour of a product.

Once a design patent is registered, no entity or individual can exploit the said design i.e. no one can make, offer to sell, or import a product that incorporates the patented design for production or business purposes.

Normally, granted within 1 year and gives protection up to 10 years from the filing date (or priority date if priority is claimed) subject to the payment of annuity fees.

What is Non-Patentable in China?

In China, patent cannot be obtained for:

• Scientific discovery;
• Rules of mental activity;
• Methods for the prevention and treatment of diseases;
• Food, beverages and dressings;
• Pharmaceuticals and substances obtained by chemical process;
• Animal and plant varieties (excluding non-biological methods for producing animal and plant varieties); and
• Substances obtained through nucleus exchange or by means of nuclear transformation.

Computer programs as such cannot be patented, but they may be protected under the Regulations on Computers Software Protection, formulated in accordance with the Copyright Law. An invention containing a computer program may be patentable if the combination of software and hardware as a whole can actually improve the prior art, bring about technical results and constitute a complete technical solution.

Patent in China

Relevant Office/Ministry	State Intellectual Property Office (SIPO)
Law in Force	Patent Law of The People’s Republic of China, 2008
PCT Contracting State	YES
Paris Convention	YES
Document(s) required for filing patent application	Details like Name and address of applicant(s) and inventor(s); Patent Specifications (Abstract, description, claims and drawings) in Chinese and in Word format; Copy of any amendment; if applicable; Signed copy of the Power of Authority (within 3 months from the filing date); and Certified copy of the Priority Documents, if applicable (within 3 months from the filing date)
Prosecution Process	Patent applications in China undergo formal and substantive examinations. Substantive examination must be filed/requested within 3 years from the filing date or, if priority is claimed, from the priority date.   The first examination report is issued between 12 and 18 months from the date of the examination request.
Registration Term	Patent is granted for twenty years (20) from the filing date.   The first annual fee is to be paid at the time of registration. All subsequent annual fees should be paid in advance before the anniversary of the filing date.   Grace period of 6 months is available in case of late payment by paying a corresponding surcharge.

Types of applications in China:

a) Patent Application

It is not possible at present to file a provisional application in order to get an early filing date in China. Application form with patent specification (Abstract, description, claims and drawings) in Chinese and in Word format is required to be filed through local patent agency/firm.

b) Convention Application

The Convention application is an application which claims priority from a foreign application filed in other country and the same is required to be made within 12 months for utility models and 6 months for design patent claiming the priority date of the first application.

c) National Phase Application

The national phase application is an application which is based on PCT International application and the same is required to be filed within 30 months from the earliest priority date. The priority time limit for PCT or non-PCT applications can be extended two additional months paying an additional fee.

d) Divisional Application

Where an application contains two or more inventions, applicants may submit a divisional application on their own initiative or in accordance with an office action from an examiner.

Divisional applications must be submitted on the basis of the initial application, no later than two months from the date of receipt of the notification of grant.

Procedure of National Application

1. Registration/Filing of Invention Patent

The application documents consist of an application form, specification and its abstract, claims, and drawings (if any). An application for invention patent shall go through five phases, i.e., acceptance, preliminary examination, publication, substantive examination and granting.

• Registration/Filing of Utility Models and Designs Patent

Unlike invention patent, the examination for utility models and design patent are carried out much faster and simpler, because they only subject to a preliminary examination, which is only related to the documental formalities

At present, the examination period for utility model takes 8 to 10 months and about 6 months for designs.

Official Language

The official language of patent application is Chinese. A precise Chinese translation of the application must be submitted at the time of filing of patent as late filing is not applicable, if patent document is drafted in foreign language.

Patent Examination & Prosecution

After the application is filed, the examiners from SIPO conducts examination:

Utility model and external design patents will undergo only preliminary examination, while invention patents must undergo both preliminary and substantive examinations.

Preliminary examination to check whether the application documents are correct. Substantive examination to check the content of the patent application.

The first examination report is issued between 12 and 18 months from the date of the examination request.

In China, it is possible to request an accelerated examination under the PPH (Patent Prosecution Highway). PPH participation can reduce examination time by more than half.

During the examination of a patent application, the Chinese Patent Office may issue various official notices, such as “Notice on Correction”, “Notice on the First Office Action”, “Notice on the Second Office Action”, etc., and specify corresponding time limits for the applicant’s response.

The corresponding time limit for response to “Notice on Correction” is two months from the date of issuing the notice by the Patent Office; for “Notice on the First Office Action”, four months from the date of issuing; for “Notice on the Second Office Action”, two months from the date of issuing; etc. If the applicant can not meet the time limits, he may file a request with the Patent Office for the extension of the time limit for one time for up to two months along with fee for extension. The request shall be filed prior to the expiration of the time limit. If the request is filed after the expiration of the time limit, the Patent Office will deem the request not to have been filed and will issue a “Notice on Deeming the Application to Have Been Withdrawn”.

Patent Grant & Annuity

If the patent application is successfully preliminary examined, an invention patent will be published in the Invention Patent Gazette within 18 months from the application filing date.

The applicant may request substantive examination from SIPO within three years of the date of patent application. If the invention patent is successfully examined then it will be granted patent rights and published in the Invention Patent Gazette.

If there are no substantive defects or other issues with the preliminary examination then a design patents will be granted patent rights. A design patent will be published in the Design Patent Gazette. A utility model will be published in the Utility Model Patent Gazette.

The term for invention patents in China is 20 years from the filing date. The term for utility model patents and design patents is 10 years from the filing date.

The annual fee for the year in which the patent is granted must be paid at registration. Subsequent annual fees are payable yearly in advance. In case, the applicant/patentee miss the deadline for payment of the annual fees, there is a six-month grace period. If annuity not paid (plus surcharge) within this period, the patent lapses.

However, option of restoration is available i.e. the patentee can make request for restoration of a patent within two months from the date of receipt of the notification of lapse by providing reasons for said request and by paying a restoration fee. Under certain conditions of force majeure, restoration may be requested up to two years from the date of expiry of the time limit for payment.

Patent Opposition

The opposition system was abolished in China in 2001, therefore, China has no patent opposition procedure. The only way to challenge a granted patent is through invalidation procedure i.e. by filing request for invalidation application with sufficient evidence to the Patent Review Board at any time even after the patent has expired.