1.How many kinds of patent application are available in China?

There are three kinds as follows:

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

2.“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.

3.“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.

 

2.Concerning invention or utility model, what are the substantive requirements for the grant of a patent?

Any invention or utility model for which patent right may be granted must possess novelty, inventiveness and practical app1icability.

Novelty means that, before the date of filing, no identical invention or utility model has been publicly disclosed in publications in China or abroad or has been publicly used or made known to the public by any other means in China, nor has any other person filed previously with State Intellectual Property Office of P.R.C. an application which described the identical invention or utility mode1 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.

Concerning design, what are the substantive requirements for the grant of a patent?

Any design for which patent right may be granted must not be identical with and simi1ar to any design which, before the date of filing, has been publicly disclosed in publications in China or abroad or has been publicly used in China, and must not be in conflict with any prior right of any other person.

 

3.What are requirements for filing an invention patent application or a utility model application in China?

1. Name and address of the applicant(s), name and nationality of the inventor(s)

2. Information of priority right (if priority right is claimed)

3. Description, claims, abstract, drawings (if any)

4. Certified priority document (if priority right is claimed)

5. Assignment (if the applicant in China is different from that of the priority application)

6. A duly executed Power of Attorney

Notes:

Items 1-3 are mandatory at the time of filing, whereas items 4-6 can be later filed.

 

4.What are requirements for filing a design patent application in China?

1. Name and address of the applicant(s), name and nationality of the inventor(s)

2. Information of priority right (if priority right is claimed)

3. Drawings or one set of Photographs

4. Certified priority document (if priority right is claimed)

5. Assignment (if the applicant in China is different from that of the priority application)

6. A duly executed Power of Attorney (Download)

Notes:

Items 1-3 are mandatory at the time of filing, whereas items 4-6 can be later filed.

 

5.What events are deemed as not losing their novelty?

An invention-creation for which a patent is applied for does not lose its novelty where, within six months before the date of filing, one of the following events occurred: (l) where it was first exhibited at an international exhibition sponsored or recognized by the Chinese Government;

(2) where it was first made public at a prescribed academic or technological meeting;

(3) where it was disc1osed by any person without the consent of the applicant.

 

6.What are unpatentable in China?

According to Article 5 of Chinese Patent Law, no patent right shall be granted for any invention-creation that is contrary to the laws of the State or social morality or that is detrimental to public interest.

According to Article 25 of Chinese Patent Law, no patent right shall be granted to the following:

(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 in producing products referred to in item (4), patent right may be granted.

 

7.What language must be used for a patent application in China?

According to Rule 4 of Implementing Regulations of the Chinese Patent Law, any document submitted under the Chinese Patent Law and its Implementing Regulations shall be in Chinese; the standard scientific and technical terms shall be used if there is a prescribed one set forth by the State; where no generally accepted translation in Chinese can be found for a foreign name or scientific or technical term, the one in the original language shall be also indicated. Where any certificate and certified document submitted in accordance with the Chinese Patent Law and its Implementing Regulations are in foreign languages, and where the State Intellectual Property Office of P.R.C. deems it necessary, it may request a Chinese translation of the certificate and the certified document to be submitted within a prescribed time limit.

 

8.Can priority be claimed in China?

Yes. According to Article 29 of Chinese Patent Law，if, within twelve months from the date on which any applicant first filed in a foreign country an application for a patent for invention or utility model, or within six months from the date on which any applicant first filed in a foreign country an application for a patent for design, the applicant files in China an application for a patent for the same subject matter, the applicant may, in accordance with any agreement concluded between the said foreign country and China, or in accordance with any international treaty to which both countries are party, or on the basis of the principle of mutual recognition of the right of priority, enjoy a right of priority.

 

9.When should priority document be submitted?

Any applicant who claims the right of priority shall make a written declaration when the application is filed, and submit, within three months, a copy of the patent application document which was first filed; if the applicant fails to make the written declaration or to meet the time limit for submitting the patent application document, the claim to the right of priority shall be deemed not to have been made.

 

10.May an applicant amend his or its application for a patent?

Yes, an applicant may amend his or its application for a patent, but the amendment to the application for a patent for invention or utility model may not go beyond the scope of the disclosure contained in the initial description and claims, and the amendment to the application for a patent for design may not go beyond the scope of the disclosure as shown in the initial drawings or photographs.

According to Rule 5l of Implementing Regulations, when a request for examination as to substance is made, and within the time limit of three months after the receipt of the notification of State Intellectual Property Office of P.R.C. informing that the application has entered into examination as to substance, the applicant for a patent for invention may amend the application for a patent for invention on its or his own initiative.

Within two months from the date of filing, the applicant for a patent for utility model or design may amend the application for a patent for utility model or design on its or his own initiative.

Where the applicant amends the application after receiving the notification of opinions of the examination as to substance from the State Intellectual Property Office of P.R.C., the applicant shall make the amendment as required by the notification.

 

11.When will an application for invention patent be published? Can the application be published earlier?

Where, after receiving an application for a patent for invention, State Intellectual Property Office of P.R.C., upon preliminary examination, finds the application to be in conformity with the requirements of Chinese Patent Law, it shall publish the application promptly after the expiration of eighteen months from the date of filing. Upon the applicant’s request, the State Intellectual Property Office of P.R.C. may publish the application earlier.

 

12.When can a request for substantive examination of an application for invention patent be made?

Upon the request of the applicant for a patent for invention, made at any time within three years from the date of filing, State Intellectual Property Office of P.R.C. will proceed to examine the application as to its substance. If, without any justified reason, the applicant fails to meet the time limit for requesting examination as to substance, the application shall be deemed to have been withdrawn.

The State Intellectual Property Office of P.R.C. may, on its own initiative, proceed to examine any application for a patent for invention as to its substance when it deems it necessary.

 

13.What action should be taken after receiving the rejection decision from State Intellectual Property Office of P.R.C. ?

If the application is rejected by State Intellectual Property Office of P.R.C. , applicant may， within three months from the date of receipt of the rejection, request the Patent Reexamination Board to make a reexamination. The reexamination request must state the reasons and may be accompanied by the relevant supporting documents. When requesting for reexamination, applicant may amend the application, however, such amendment must be limited to only that part of the application to which the rejection decision relates. If the applicant for patent is not satisfied with the decision made by the Patent Reexamination Board, it or he may, within three months from the date of receipt of the notification, institute legal proceedings in the people's court.

 

14.When shall patentee pay an annual fee?

The patentee shall pay an annual fee beginning with the year in which the patent right was granted. Subsequent annuity of next year shall be prepaid within one month prior to the filing date of the current year.

 

15.Who can request for invalidation of a Chinese patent?

Where, starting from the date of the announcement of the grant of the patent right by State Intellectual Property Office of P.R.C., any entity or individual considers that the grant of the said patent right is not in conformity with the relevant provisions of Chinese Patent Law, it or he may request the Patent Reexamination Board to declare the patent right invalid.

 

16.What is infringement of patent right? How to deal with dispute on infringement?

Where a dispute arises as a result of the exploitation of a patent without the authorization of the patentee, that is, the infringement of the patent right of the patentee, it shall be settled through consultation by the parties. Where the parties are not willing to consult with each other or where the consultation fails, the patentee or any interested party may institute legal proceedings in the people's court, or request the administrative authority for patent affairs to handle the matter.

 

17.What kinds of cases of patent disputes are under the jurisdiction of Chinese courts?

The people's courts of P.R.C. accept following cases of patent disputes:

1. disputes over the ownership of the right to apply for patent;

2. disputes over the ownership of the patent right;

3. disputes over contracts for assignment of the patent right or the right to apply for patent;

4. disputes arising from patent infringement;

5. disputes arising from counterfeiting other persons' patents;

6. disputes over the exploitation fee after the publication of the applications for patent for invention and before the grant of the patent right;

7. disputes over the reward and remuneration for the inventors or creators of service inventions;

8. cases of pre-litigation requests for stopping infringement or for property preservation;

9. disputes over the qualification of inventors or creators;

10. cases of dissatisfaction with the reexamination decisions by the Patent Reexamination Board to uphold rejection of applications;

11. cases of dissatisfaction with the reexamination decisions by the Patent Reexamination Board on requests for invalidation of the patent right;

12. cases of dissatisfaction with the reexamination decisions by the Patent Administrative Organ under the State Council on execution of compulsory licenses;

13. cases of dissatisfaction with the adjudication by the Patent Administrative Organ under the State Council on the royalties for execution of compulsory licenses;

14. cases of dissatisfaction with the administrative reexamination decisions by the Patent Administrative Organ under the State Council;

15. cases of dissatisfaction with the administrative decisions by the administrative authorities for patent affairs; and

16. any other cases of patent disputes.

Lawsuits instituted against acts of infringement of the patent right shall be under the jurisdiction of the people's court of the place where the defendant has its or his domicile or of the place where the infringing acts take place. Places where acts of infringement take place include: places where acts take place of manufacturing, using, offering for sale, selling or importing products accused of infringing a patent for invention or utility model; places where the acts of using a patented process takes place and where acts take place of using, offering for sale, selling or importing products acquired directly according to the patented process; places where acts of manufacturing, selling or importing products of patented designs; places where acts of counterfeiting patents of other persons take place; and places where consequences of the preceding infringing acts arise.

Where a plaintiff takes action against the manufacturer of an infringing product, but not against the seller as well and the places where the infringing products are manufactured and sold are not the same place, the people's court of the place of the manufacture has the jurisdiction thereover; where the action is taken with both the manufacturer and seller accused as the co-defendants, the people's court of the place where the infringing products are sold has the jurisdiction.

Where the seller is a subsidiary of the manufacturer and the plaintiff takes action against the act of the infringing product manufacturer to manufacture and sell the product, the people's court of the place where the products are sold has the jurisdiction.

 

18.How long will it take to get a patent in China?

It may take three years to five years for obtaining a patent for invention，and six to fifteen months for obtaining a patent for utility model, and around six months for obtaining a patent for design in China.