Patent procurement

Legislation

On 1 April 1985 the Patent Law of the PRC and its Implementing Regulations came into effect. The Patent Law was revised on 4 September 1992 for the first time and became effective on 1 January 1993 together with its Implementing Regulations. On 25 August 2000 the 17th Session of the Standing Committee of the 9th National People's Congress approved the second revision of the Patent Law and the revised Law came into force on 1 July 2001.

China has been a member of the World Intellectual Property Organization (WIPO) since 3 June 1980. On 19 March 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 1 January 1994 and has been a member of the Budapest Treaty for the Deposit of Micro-organisms since 1 July 1995. China entered into the Locarno Agreement Establishing an International Classification for Industrial Designs on 19 September 1996 and the Strasbourg Agreement Concerning International Patent Classification on 19 June 1997.

Language

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

Types of patent

There are three types of patent: a patent for Invention, a patent for a utility model and a patent for design.

Duration

The duration of a patent for invention is 20 years, and the duration of a patent for utility model or design is 10 years , and runs 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 colour with shape or pattern, of a product which creates an aesthetic feeling and is fit for industrial application.

Unpatentable subject matters

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

• rules and methods for mental activities;

• scientific discoveries;

• methods for the diagnosis or the treatment of diseases;

• animal and plant varieties;

• substances obtained by means of nuclear transformation.

Patents may be granted for processes used in producing animal and plant varieties.

Biological material (Micro-organisms)

Biological material per se is a patentable subject matter.

Where an application for an invention concerns a new biological material which is not available and which cannot be described in the application in such a way 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 proof of viability from the depository authority.

Computer software

Computer software per se is not patentable. Computer software is protected, however, under the Copyright Law and can be protected under Patent Law if it falls within a technical field, resolves a technical problem and achieves a technical result.

New plant varieties

New plant varieties per se are not patentable; however, since 1 October 1997 new plant varieties may be protected under the Regulations on the Protection of New Plant Varieties. China has been a member state of the International Convention for the Protection of New Plant Varieties since 23 April 1999. The term of protection of new plant varieties runs from the date of grant thereof, and 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 another person that describes an identical invention or utility mode and is published after the filing date of the said invention or utility model.

Similarly, 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.

Inventiveness

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

Likewise, a utility model possesses inventiveness if it has substantive features and represents progress.

Conventional priority

Conventional priority for invention applications and utility model applications can be claimed within 12 months from the date of first filing outside China. Conventional priority for design applications can be claimed within six months from the date of first filing outside China. Priority documents must be submitted to the SIPO within three months from the date of filing in China.

Domestic priority

Domestic priority for invention applications and utility model applications can be claimed within 12 months from the date of first filing in China. A domestic parent application on which the domestic priority claim is based should not claim any conventional or domestic priority, and the parent application will be deemed withdrawn when the new application claiming domestic priority is filed.

Late entry of PCT application

If an applicant under the PCT fails to go through the relevant formalities for entering the Chinese national phase within 20 or 30 months from the priority date, the applicant may, after paying a surcharge for the late entry (official fee: about US$121), go through these formalities before the expiration of the time limit of 22 months or 32 months, respectively, from the priority date.

First-to-file rule

The Patent Law, like the Trademark Law, adopts a first- to-file system.

Filing documents

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

• power of attorney, signed by the applicant (without notarization);

• specification with claims and abstract;

• drawings, if any (two sets of formal drawings);

• certified copy of the priority application if priority is claimed (translation of the full text is only necessary when required by the SIPO);

• assignment of priority right is required to be provided only if the applicant of the Chinese application differs from that of the priority application.

Each application for a design must include the following documents:

• power of attorney, signed by the applicant (without notarization);

• drawings or photographs of the design, in triplicate (minimum 3 — 8 centimetres, maximum 15 — 22 centimetres);

• certified copy of the priority application if priority is claimed.

Claim format

The 'European' claim format, which contains a preamble portion indicating the technical field and the technical features of the prior art, and a characterizing portion stating the technical features of the invention, is highly recommended.

Publication

Patent applications for inventions are published promptly after the expiry of 18 months from the filing date or priority date, whichever is the earlier, after the preliminary examination.

Substantive examination

Patent applications for inventions are examined as to substance. In order to initiate the substantive examination procedure, applicants must submit a formal request within three years from the Chinese filing date or the priority date, whichever is earlier. Failure to do so will result in the application being deemed withdrawn.

Utility models and designs are not examined as to substance. Patents will be issued automatically after preliminary examination.

Duty of information disclosure

When the applicant of an invention application requests substantive examination, the applicant shall provide prefiling date reference materials concerning the invention. The SIPO may ask the applicant to furnish any search reports and examination results issued by foreign patent authorities such as the European Patent Office (EPO), The United States Patent Treaty Organization (USPTO) and the Japanese Patent Office (JPO) during the examination of the corresponding foreign applications.

Unity requirement

An application for an invention or utility model shall be limited to one invention or utility model. Two or more inventions or utility models belonging to a single general inventive concept, which may be filed in one application, 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.

An application for designs 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 as one application. The expression 'the same class' means that the products incorporating the designs belong to the same sub-class in the classification of products for designs. 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.

Filing of divisional application

A divisional application shall be filed by an applicant before the expiry of two months from the date of receipt of the notification in which a patent right is granted for the parent application. Where an application for patent has been rejected, withdrawn or is deemed to have been withdrawn, no divisional application may be filed.

Multiple dependent claim

Any multiple dependent claim that 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 claim.

Amendment of applications

Amendments of applications are allowed but may not go beyond the scope of original disclosure in the initial description and claims.

Applicants may amend their applications on their own initiative at the same time as the examination request is submitted, or within three months from the date of receipt of the notification from the SIPO informing the entry of the application into the examination stage.

For utility models and designs, amendments can be made within two months from the filing date. Applicants may amend the applications on their own initiative. Amendments should not change the essential elements of the designs.

Final rejections and appeals (re-examination)

If an application is found to be unacceptable by the SIPO and the applicant has been given an opportunity to make a response, a final rejection can be made.

Appeals against rejections may be made to the Patent Re-examination Board (the official term for an appeal to the Board is 're-examination').

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.

The power of the Board

The Board's decisions on the allowability of invention, utility model and design applications on the validity of invention, utility model and design patents are not final, and therefore, can be further appealed against to the court .

The scope of patent protection

The scope of patent protection for inventions and utility models 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 designs is determined by the products incorporating the designs as shown in the drawings or photographs.

Patentees have the right to prevent others from making, using, offering to sell, selling or importing the patented products (or products incorporating patented designs), or using the patented processes, or offering to sell, selling or importing the products directly obtained by the patented processes, for production or business purposes.

Right of prior users

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 its manufacture or use, and this person continues to make or use it within its original scope only, after the patent is issued.

Maintenance fees and annuities

Maintenance fees are to be paid within two months from the date of receipt of the notification to grant the patent right. From the third year after the filing of a patent application and before the patent right is granted, an applicant is required to pay the maintenance fee for the application.

The annuities shall also be paid within two months from the date of receipt of the notification to grant the patent right.

There is a grace period for paying the annuities of six months.

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 prosecutions and other proceedings before the Chinese Patent Office and the Patent Re-examination Board.

Assignment and licence contracts

Assignment of patents to foreigners by Chinese entities or individuals must be approved by the competent departments of the State Council. Assignment contracts come into force after they are recorded with the SIPO. Any licence contract shall, within three months from the date of coming into force, be submitted to the Chinese Patent Office for recording.

Marking

Marking is not compulsory but recommended. The number of the patent application or patent should be indicated.