This article has been written by Lyngeolle Morris, pursuing a Certificate Course in Intellectual Property Law and Prosecution from LawSikho.

Introduction

In order to successfully register and own a patent in China, an applicant must adhere to a number of key requirements and steps before being granted a patent under Chinese law. Foreigners who are conducting business within China, particularly those focused on the making and/or use of new inventions should be mindful of the various processes involved in filing and registering a patent in China if they are desirous of successfully protecting their intellectual property rights and interests in that jurisdiction. 

The patent application procedure and protection of patents is governed by the Patent Law of the People’s Republic of China (hereinafter ‘the Chinese Patent Law’) as well as the Implementing Regulations of the Patent Law of the People’s Republic of China (hereinafter ‘the Chinese Patent Regulations’).

In this article, we will delve into the procedure involved in getting a patent filed in China including the applicable laws and regulations, eligibility requirements, the various steps involved, the resources required, the timeframe and the outcomes achieved once the patent has been successfully filed.

Background

Over the past few decades, business between the People’s Republic of China and the rest of the world has witnessed a significant boom, as there has been a general shift in the opening of China’s borders for increased foreign trade and investment. One key area which has made a significant impact on China’s economy and the rest of the world has been the rapid increase in the use of new technologies and innovations.  Under the Chinese Patent Law, foreigners, foreign enterprises or foreign organizations conducting business within China or those seeking to do so, particularly those in the business of utilizing new technologies and inventions should be mindful of the various processes involved in patent protection. 

There are three ways in which a patent may be filed under the Chinese legal framework: 

1. A patent may be filed in China through a patent agent or patent attorney;
2. An international patent application may be filed under the Patent Cooperation Treaty (‘the PCT’) with the national patent office of the Contracting State where the applicant is either a national or resident. Alternatively, the application may be made with the International Bureau of the World Intellectual Property Office based in Geneva, Switzerland. Thereafter, an application may then be entered at the national phase by filing the application at the relevant office in China no later than thirty (30) months from the first application or the priority date of filing; 
3. An application may be made in a foreign jurisdiction being a Contracting State under the Paris Convention for the Protection of Industrial Property (‘the Paris Convention’). Following that, the applicant must within a specified period (twelve (12) months for patents and utility models; six (6) months for industrial designs and marks), apply for protection in China, one of the Contracting States of the Paris Convention. This will give the applicant a right of priority over applications filed by others during the above-mentioned period.

For the purposes of this article, we will focus on the filing procedure as provided in Part (1) above, that is, where an application is made directly in the People’s Republic of China through a patent agent or patent attorney by a foreigner, foreign enterprise or foreign organization. 

Eligibility criteria for filing a patent in China

In order for a patent to be granted under Chinese law, the applicant must show that the invention or utility model meets the requirements of novelty, utility and inventiveness.

To satisfy the ‘novelty requirement’, it must be shown that the subject matter of the application is not identical to any other patented invention, utility model or design patent or any other similar kind that has been publicly disclosed or publicly used, whether domestically or abroad. 

The invention or utility model must also have some practical value to comply with the ‘utility requirement’.

To demonstrate ‘inventiveness’ the applicant must be shown that there has been some distinct inventive step or improvement.

The China National Intellectual Property Administration is responsible for receiving patent applications, examining them and issuing patents.

Appointment of a patent agent to oversee the application

Under Article 19 of the Chinese Patent Law, a foreigner, foreign enterprise or other foreign organization applying for a patent must appoint a patent agency in China to act of his or its behalf.

A list of patent agencies may be found here: http://dlgl.cnipa.gov.cn/txnqueryAgencyOrg.do. This webpage contains a list of patent agencies and has been sorted according to the name, location, legal structure of the patent firm, years of establishment and its institutional status. A foreigner seeking to source a patent agent may conduct an independent search and may consider the following when selecting a patent agent or patent attorney: the type of invention for which the patent is sought, whether the firm has experience in filing patents in the specific area for which the patent application is sought, the location of the patent agency (if relevant for business purposes) and the overall reputation of the firm. 

Types of patents and the duration of term

There are three types of patents for which an application can be made under Chinese patent law: an invention; a utility model and a design.

A patent right granted for an invention will last for the duration of twenty (20) years from the date of filing the application. With respect to utility models and designs, a patent right is granted for the period of ten (10) years from the filing date.

What information must be submitted to the Patent Administration Department

Pursuant to Article 26 of the Chinese Patent Law, the applicant must ensure that the following information is provided within the substantive patent application:

A Written Request which must include:

1. The title of the invention or utility model;
2. The name of the inventor or designer;
3. The name and address of the applicant and other related matters.

A Specification and an abstract thereof including:

1. A description of the invention or utility model (which must be in a manner sufficiently clear and complete that a person skilled in the relevant field of technology can accurately produce it);
2. Drawings are to be appended where necessary;
3. An abstract with a description of the technical essentials of the invention or utility model.

The Patent Claim

1. Must state the scope of the patent protection requested.

Under Article 27 of the Chinese Patent Law, a patent application for a design must include the following:

• A Written Request together with drawings or Photographs of the design.
• The product on which the design is to be used and the category of the product.

Manner of filing the patent application

Under Rule 3 of the Chinese Patent Regulations, the patent application must be written in Chinese. Where a document is submitted in a foreign language, the patent administration department may request that the document in question be translated to Chinese.

The application being filed may either be forwarded to the Patent Office either by mailing it, by personal delivery and most recently, by electronic means.  The filing date of the application would be the date on which the application is received by the Patent Office, and in the instance of mailed documents, the postmark date. The China Patent Electronic Filing portal can be found here: http://cponline.cnipa.gov.cn/. The applicant is required to file two (2) copies of the application with the patent administration department.

Option of withdrawing the patent application

If the applicant is desirous of withdrawing the application, a declaration to that effect must be submitted to the patent administration department. The declaration must also indicate the title of the invention, the filing number, the filing date.

Examination process

In respect of an application for a patent for a utility model or design, where the Patent Office  finds on a preliminary examination that there is no reason to reject the application, it would make a decision to grant the patent, and thereafter issue the patent certificate, register it and announce it.

As it relates to an application for a patent for invention, once the Patent Office is satisfied on a preliminary examination that the application conforms with the legal formalities, it will immediately after a period of eighteen (18) months from the filing date, publish the application.

In the case where the applicant is desirous of a substantive examination of the application, the Patent Office may so proceed. It must be noted that a request to that effect must be made within three (3) years from the filing date. The Patent Office may also of its own initiative conduct a substantive examination in respect of an application for an invention patent.

Where a substantive examination is carried out, the onus is on the applicant to furnish the patent office with all relevant reference materials as well as all other documentation from investigations made where a prior foreign application has been made with respect to the same invention.

Where it is found by the Patent Office that the substantive application fails to conform with the legal requirements, it may invite the applicant to respond and to make its amendments. Where the applicant fails to respond within the prescribed time limit, the application would be considered withdrawn, and in the case where a response is given but not deemed in conformity, the application would be rejected.

In the instance where two or more applicants file identical inventions on the same date, then the China Patent Intellectual Property Administration will require that consultations be held amongst the parties, to determine the property party entitled to proceed with filing the application.

Amendments to the patent application

Patents for inventions

As it relates to inventions, the applicant is eligible to amend the application within three (3) months after receiving a notification from the patent office regarding commencement of the examination process of the application.

Patents for utility models or designs

For patents related to a utility model or design, the applicant may amend the application within two (2) months from the filing date of the application.

It should be noted that the patent administration on its own initiative may correct any clerical and symbol mistakes found in the patent application. In the instance where the applicant amends the application after the notification of opinions of the examination has been received, the applicant is only permitted to make amendments in respect of the defects pointed out by the examiner.

Once the amendments are made to the description or claims in the application, a replacement sheet must be submitted to the patent administration department.

Likely rejections regarding the patent application

The applicant should be aware that in the following instances, a patent right would not be granted by the China National Intellectual Property Administration:

1. Where the invention violates the laws of the People’s Republic of China, is against social morals or detrimental to public interest;
2. Where the subject matter of the application fails to meet the characteristics of novelty, inventiveness and usefulness;
3. Where the application relates to scientific discoveries, rules and methods for mental activities, methods for diagnosis or treatment of diseases, animal and plant varieties, substances obtained through nuclear transformation;
4. Where another party has already applied for an identical patent;
5. Where the subject matter of the application exceeds more than one single invention or utility model, except where they relate to a single inventive content.
6. Where the applicant fails to comply with the formalities under the Chinese Patent Law and Chinese Patent Regulations;
7. Where the applicant makes an amendment to the application that goes beyond the scope of what is provided in the initial description, claim, drawings or photographs within the patent application.
8. Where in the case of a divisional application (i.e: an application filed for a patent that contains two or more inventions, utility models or designs), the applicant goes beyond the scope of disclosure contained in the initial application where priority is claimed.

Next steps once the patent right is granted

Once the patent administration department issues the notice to grant the patent right, the applicant is then required to formally register the patent within two (2) months from the date of notification. Once this is conducted, a patent certificate will be issued and thereafter announced.

It is critical that the application follows through with the formalities within the two-month time frame, failing which the applicant would be considered as having ‘abandoned’ the right to obtain the patent.

Applicable fees

A person making a patent application will be required to pay the following fees:

1. Filing fee, additional fee for filing an application, printing fee for publishing the application and fee for claiming priority (where applicable);
2. Examination fee and re-examination fee;
3. Registration fee, printing fee for the announcement and annual fee;
4. Fee for requesting restoration of right, and fee for requesting extension of time limit where applicable;
5. Fee for making a change in the bibliographic data, fee for requesting for evaluation report of patent, and fee for requesting for announcement of invalidation of patent where applicable.

Pursuant to Rule 94 of the Chinese Patent Regulations, the relevant fees paid may be made in the following manner:

• Direct payment
• Bank remittance
• Postal remittance
• Any other means prescribed by the patent administration office

The filing fee, additional fee for filing an application, printing fee for publishing the application as afore-mentioned must be paid no later than two (2) months from the filing date or no later than fifteen (15) days from the date that the application acceptance notification has been received from patent administration department. If these fees are not paid within the above-mentioned time frame, the application would be considered withdrawn.

Once the patent has been approved, the applicant will be required to pay for the following fees:

1. The registration fee for the grant of patent right.
2. The printing fee for the announcement of the grant of patent right.
3. The annual fee for the patent right.

The applicant will also be responsible for the patent agent or patent attorneys’ fees. It should be noted that the registration process would not be completed if the applicant fails to pay all of these requisite fees.

A guide on the filing fee structure may be found here: https://www.chinatrademarkoffice.com/about/fee_all.html

To know more about Patents please visit:

Conclusion

According to Statista Research Department (2020), China ranked as the top country with the highest number of patent grants worldwide, being patents granted to resident and non-resident companies or organizations, having issued some 452, 804 patents in 2019.

The World Intellectual Property Organization also indicated that China ranked as having the highest number of PCT applications in 2019, being 58,990, with the United States of America and Japan, ranking second and third respectively.

It is evident that the number of patents filed years in China have outranked other countries across the globe and it is likely to continue in that vein given its increased focus on its innovation economy. In summary it is critical that as a foreigner seeking to conduct business in China, particularly in relation to a new creation-invention, that you seek to understand the process entailed in having your patent filed in China which may be summarized as follows:

• Ensuring that the eligibility criteria to file the application is met.
• Furnishing the requisite documentation to the patent office (written request, specifications, claim, appendices).
• Ensuring that the requisite documentation is filed in the correct manner whether by personal delivery, mail or electronically.
• Ensuring that any appropriate amendments are made in the requisite time frame and in the correct manner and.
• Ensuring that the relevant fees are paid and the registration process is finalized in a timely manner once the patent right is granted by the Patent Office.

Once you are able to successfully comply with the legal formalities of patent filing and registration under Chinese patent law, this will ultimately enable you to protect your intellectual property rights in respect of the commercial use, distribution, importation, sale or other forms of exploitation of your patented invention. 

Recommendations

As a foreigner, it is recommended that you work closely with a translator when gathering the relevant documentation which is to be made available to your patent agent or patent attorney, as your documentation will need to be in Chinese. Secondly, it is critical that all relevant filing and registration fees are paid in a timely manner so as to safeguard the management of your costs, or in a ‘worst-case’ scenario, to ensure that your application is not considered withdrawn or ultimately abandoned. Finally, you should seek to endeavour that once the patent has been approved that you follow through with the formal registration process within the prescribed time limit so that you are able to successfully enforce your patents rights and protect your interests from third-party infringement.

Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skill.