A. PatentsThe Patent Law of the People’s Republic of China went into force on 12 March 1984, and was amended on 4 September 1992 and 25 August 2002.
There are three types of patents in China:
Any invention or utility model for which patent right may be granted must possess novelty, inventiveness (the same as non-obviousness) and practical applicability (utility).
- Invention patents
- Utility model patents
- Design patents
Any design for which patent right may be granted must not be identical with and similar to any design which, before the date of filing, has been publicly disclosed in publications in the country or abroad or has been publicly used un the county, and must not be in conflict with any prior right of any other person.
B. TrademarksThe Trademark Law of the People’s Republic of China was adopted on 23 August 1982, and revised on 22 February 1993 and 27 October 2001.
Registered trademarks indicate trademarks that have been approved and registered by the trademark Office. These include trademarks, service marks, collective marks, and certification marks.
Collective marks are signs that are registered in the name of bodies, associations, or other organisations. Such marks are used by members or the organisation in their commercial activities and to indicate their membership of the organisations.
C. CopyrightsThe Copyright Law of the People’s Republic of China was adopted on 7 September 1990. The final version went into effect on 27 October 2001.
D. Plant Variety ProtectionThe Regulation of Plant New Variety Protection went into force on 1 October 1997. Currently, this regulation covers 119 plant species. Among the 119 species, 41 varieties are in the area of agriculture and the remaining 78 varieties relate to forestry.
Invention patents are enforceable for up to 20 years from the application date. Patents for utility models and designs are enforceable for up to 10 years from the application date.
China is a signatory to the following international IP treaties or Agreements:
- World Intellectual Property Organisation (WIPO); joined on 3 June 1980.
- Paris Convention For The Protection Of Industrial Property (Paris Convention); joined on 19 March 1985.
- The Patent Cooperation Treaty (PCT); joined on 1 January 1994.
- Budapest Treaty on the International Recognition of the Deposit Of Microorganisms for the Protection of Microorganism for The Purpose of Patent Protection1987 (Budapest Treaty); joined on 1 July 1995.
- Agreement on the Trade Related Aspects of Intellectual Property Rights (TRIPS).
- Strasbourg Agreement of 1971, Concerning the International Patent Classification (IPC), joined on 19 June 1997.
- Locarno Agreement of 1968, Establishing An International Classification for Industrial Designs, joined on 19 September 1996.
A. Patent Application Requirements
1. Invention and Utility Model Applications
- Patent request
- Patent specification
- Abstract drawings
2. Design Applications
- Patent request
- Drawings or photos of the design
- Brief description of the design
B. Overview of Application ProcedureIn general, the Chinese patent application procedure from filing to issuance is summarised in the following flow chart:
1. Preliminary examinationFor invention patent applications, preliminary examination occurs between the filing and the publication of the application. Chinese patent applications are published 18 months after the application date, as long as the application satisfies all the requirements.
The goal of the preliminary examination is to determine that:
During the preliminary examination, the applicants have an opportunity to correct any problems identified by the examiner. If the applicant is unable to overcome any of the problems, the application is rejected.
- all required documents are included,
- all documents were submitted in a timely manner, and
- the application fees were paid correctly.
For utility model and design patent applications, the preliminary examination is the only examination process required.
2. Substantial ExaminationThe purpose of substantial examination is to determine the patentability of an invention, based on novelty, inventiveness and practical applicability. Novelty involves both an inventive step and utility.
According to Article 25 of the Chinese Patent Law, no patent right shall be granted for any of the following:
Request for substantial examination must be made to the Patent Administration Department (PAD) of the State Intellectual Property Office (SIPO) within three years of the date of filing or the date of priority (if priority is claimed). If the applicant fails to meet the time limit for requesting substantial examination (without a justifiable reason), the application is deemed to have been withdrawn.
- Scientific discoveries
- Rules and methods for mental activities
- Methods for the diagnosis or for the treatment of diseases
- Animal and plant varieties
- Substances obtained by means of nuclear transformation
However, the PAD may, on its own initiative, examine any invention patent application.
An Examiner in the PAD then conducts a search to determine whether the invention was known before the priority date. If the Examiner identifies any pertinent prior art, the applicant is requested to amend the application. This process can be repeated for several times and therefore generally tales more than a year. If the applicant can not overcome the examiner’s objection, the application is rejected. Otherwise, a decision to grant the patent right is made.
3. Patent Registration and Issuance of Patent CertificateAfter receiving notification letters for patent grant and patent registration, the applicant may complete the registration process and pay the required fees within two months. the fees include the registration fee, publication fee, and annuity.
The PAD then issues a patent certificate and publishes the patent in the Patent Bulletin. The patent rights become effective on the publication date.
D. Patent Filing and Prosecution CostsThe total cost for filing and prosecution of a Chinese patent for invention, including fees for application, printing, examination, priority request, registration, and annuity is around 14000 Chinese Yuan, which is roughly equivalent to A$2200. An additional charge of 3000 Chinese Yuan may be charged if changes are made to the application after filing date, if deferments are requested, or if the specification (description) and claims are longer than the specified page limits. Patent attorney/agent fees are not included in this amount.
The cost for filing and prosecution of utility models or design patents is considerably less; around 4000 Chinese Yuan.
According to Article 45 of the Chinese Patent Law, a granted patent may be revoked by re-examination.
After a patent is granted by the PAD, any entity or individual who claims that a granted patent right is not in conformity the Law may request that the Patent Re-examination Board revoke the patent.
After examining the request for invalidation, the Patent Re-examination Board makes a decision and notifies both the requestor and the patentee. The decision declaring the patent right invalid is registered and announced by the PAD.
Where the patentee or the person who made the request for invalidation is not satisfied with the decision of the Patent Reexamination Board, the party may, within three months from receipt of the notification of the decision, institute legal proceedings in the people's court.
If a patent has been declared invalid following a re-examination proceeding, it is deemed to not have ever existed.
A decision declaring a patent right invalid has no retroactive effect on any judgment or ruling of patent infringement that has been pronounced and enforced by the people's court, on any decision concerning the handling of a dispute over patent infringement that has complied with or compulsorily executed, or on any contract of patent license or of assignment of patent right which has been performed prior to the declaration of the patent right invalid.
However, the damage caused to other persons in bad faith on the part of the patentee shall be compensated.
A. Who may request documents?In general, SIPO only accepts requests for documents from patent practitioners in China. Parties outside of China may request documents through a Chinese patent agent or attorney (See the All-China Patent Agents Association website for more information about finding a SIPO-authorised patent agent).
B. What documents are available for viewing?
- For those patent applications that have been published but have not yet granted, only documents filed prior to the publication date may be obtained.
- For published granted patents, all formal communications between SIPO and the applicants may be obtained.
- For applications undergoing re-examination, or examination for the request of invalidation, only documents filed prior to the current examination are available.
- Documents produced from re-examination or examination for the request of invalidation of patents may only be viewed by the related parties.
C. Fees and time for duplicating documents:
- Normal: 20 Chinese Yuan per document; 10 working days from the day of request.
- Express: 100 Yuan per document; 5 working days from the day of request.
- Additional fee: 1 additional Yuan for each page after 20 pages.
- Credit cards are not accepted. Payment may be made through the Post Office.
The extent of protection of the patent right for invention or utility model is specified by the claims. The description and the appended drawings may be used to interpret the claims. However, the extent of protection of the patent right for design is determined by the product incorporating the patented design as shown in the drawings or photographs.
Where a dispute arises as a result of an infringement of the patent right of a patentee, it is normally settled through:
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.
- Consultation by the parties
- Mediation by the administrative authority for patent affairs
- Court actions
When the administrative authority for patent affairs considers that infringement of a patent has occurred, it may order the infringer to stop the infringing act immediately. If the infringer is not satisfied with the order, he may, within 15 days from the date of receipt of the notification of the order, institutes legal proceedings in the people's court in accordance with the Administrative Procedure Law of the People's Republic of China. If, within the said time limit, such proceedings are not instituted and the order is not complied with, the administrative authority for patent affairs may approach the people's court for compulsory execution.
The said authority handling the matter may, upon the request of the parties, mediate in the amount of compensation for the damage caused by the infringement of the patent right. If the mediation fails, the parties may institute legal proceedings in the people's court in accordance with the Civil Procedure Law of the People's Republic of China.
Article 63 of the Chinese Patent Law, the following are not considered to be patent infringement:
- Where, after the sale of a patented product that was made or imported by the patentee or with the authorisation of the patentee, or of a product that was directly obtained by using the patented process, any other person uses, offers to sell or sells that product.
- Where, before the date of filing of the application for patent, any person who has already made the identical product, used the identical process, or made necessary preparations for its making or using, continues to make or use it within the original scope only.
- Where any foreign means of transport which temporarily passes through the territory, territorial waters or territorial airspace of China uses the patent concerned, in accordance with any agreement concluded between the country to which the foreign means of transport belongs and China, or in accordance with any international treaty to which both countries are party, or on the basis of the principle of reciprocity, for its own needs, in its devices and installations.
- Where any person uses the patent concerned solely for the purposes of scientific research and experimentation.
- Any person who, for production and business purposes, uses or sells a patented product or a product that was directly obtained by using a patented process, without knowing that it was made and sold without the authorisation of the patentee, shall not be liable to compensate for the damage of the patentee if he can prove that he obtains the product from a legitimate source.
The data in the table show that the number of applications has increased much more dramatically than the number of granted patents. In addition, utility model and design patents are granted more frequently than invention patents. This suggests that the "substantial examination" process has prevented many applications from becoming granted.
A. Chinese Inventors Filing Applications in Countries Other than China
- Chinese applicants may file patent applications in other countries using the Patent Cooperation Treaty (PCT) filing procedure.
- The PCT application process must be carried out by a patent agent or attorney designated by the PAD of SIPO. (See the All-China Patent Agents Association website for more information about finding a SIPO-authorised patent agent).
- The cost for filing patent application in a single country is roughly $6,450 (US dollars).
B. Filing Patent Application in China by International InventorsThis process has to be carried out by an authorised patent agent or attorney designated by the PDA of SIPO.
The following documents are required for the national phase entry of PCT applications:
- PCT publication with the international search report
- International preliminary examination report and annex
- Amendments made during the international phase (PCT Article 19 and/or Article 34 amendments, if any)
- Proposed amendments at the time of national phase entry (PCT Article 28 or Article 41 amendment, if any)
- Power of Attorney, with the original signature or seal of the applicant (the Power of Attorney may be filed later).