Perspective

Enter the Dragon | Patenting in China

 

There are two principal ways to proceed with patenting in China for an invention.  One way is to file a patent application directly with the Chinese Patent Office, perhaps as a first filing or as a ‘convention’ application filed within 12 months of the filing date (i.e. priority date) of the earliest filed patent application for the invention (e.g. an Australian provisional, standard or innovation patent application).

The other way is to enter the national phase in China based on an International (PCT) Patent Application.  The ordinary deadline to file a national phase application in China is 30 months from the priority date of the International (PCT) Patent Application, the priority date usually being the filing date of the basic provisional patent application.  However, this deadline can be extended in China by up to a further 2 months (i.e. to 32 months from the priority date) as a matter of course with payment of a modest extension fee.

Application fees are based, in part, on the number of claims (i.e. excess claim fees are charged for each claim in excess of the first 10 claims) and the number of pages of the specification in excess of 30 pages.  For national phase applications these fees are calculated based on the number of claims and pages as at publication of the PCT application so there is no cost saving by amending the specification at filing to reduce the number of claims or pages.

There is only a very limited 6 month grace period for public disclosure before filing a Chinese Patent Application and it only applies to publication of the invention at recognized exhibitions or at academic or technological meetings or where disclosure occurred without the permission of the applicant.  As such, there is no broad grace period available in China in relation to earlier prior disclosure by the patent applicant as in jurisdictions such as Australia and the United States of America.

Gestalt Law has a network of trusted Chinese associate’s ready to assist with filing Chinese patent applications for clients in a cost effective and timely manner.

Appointing a Chinese Patent Attorney or Agent

When filing a Chinese Patent Application a patent applicant or owner must appoint a Chinese patent attorney or agent to act on their behalf before the State Intellectual Property Office (SIPO) of the People’s Republic of China.  It is standard practice, and mandatory, for a patent applicant or owner to sign a power of attorney authorizing the Chinese patent attorney or agent to act on their behalf. Gestalt Law has a network of trusted Chinese patent attorneys and agents that stand ready to assist patent applicants and owners of Chinese patents.

What are the requirements to file a Chinese Patent Application?

Special requirements for filing a Chinese patent application are as follows:

  • Chinese translation of the entire patent specification including the description and claim;
  • power of attorney signed by the patent owner authorizing a Chinese patent attorney to act;
  • the name of the applicant/owner in Chinese characters.

If the Chinese patent application is a ‘çonvention’ application then a certified copy of the priority document (e.g. the provisional patent application) must be obtained and filed with the Chinese Patent Office.  If the Chinese patent application is a national phase application based on a PCT application then a certified copy of the priority document will usually be transmitted by the World Intellectual Property Office (WIPO) to the Chinese Patent Office.  However, where this is not possible a certified copy of the priority document must be obtained and filed in China.

Gestalt Law is familiar with the requirements for patenting in China and enforcing patents in China and can handle this process from start to finish.

What inventions cannot be patented in China?

Chinese Patent Law is similar to other major jurisdictions in terms of what subject matter is patentable.  Significantly, computer software per se cannot be patented in China, however, an invention involving a combination of hardware and software may be patentable if the combination of software and hardware provides an improvement over the prior art and involves a solution to a technical problem and has the requisite technical character. In addition, methods for the diagnosis or treatment of diseases are not patentable in China.

Examination of Chinese Patent Applications

It is necessary to request examination of a Chinese patent application either upon filing or within three years from the priority date, if a priority date is claimed, otherwise the application shall be deemed to have been withdrawn.  If the application is a national phase application then examination may need to be requested within 4 to 6 months of entering the National Phase so there may be cost advantages to requesting examination at the time of filing the application. When requesting examination an examination fee must be paid the Chinese Patent Office.

Examination in China involves a consideration of the novelty and inventiveness (i.e. obviousness) of the invention as well as other criteria such as patentable subject matter and unity of invention.  Examination in China is somewhat rigorous and will often involve the dealing with the same prior art that has been cited in other jurisdictions such as the United States and Europe.  There will usually be two examination reports issued before a rejection decision is issued.

The deadline to respond to the first report is 4 months, extendable by a further 2 months upon request and payment of a fee, and the deadline to respond to the second report is 2 months, extendable by a further 2 months upon request and payment of a fee.

A rejection decision can only be overcome by requesting re-examination before the Patent Reexamination Board.  It is possible to seek an interview with the Examiner which is recommended when responding to the second examination report in particular.

A single patent application can have more than one independent claim (e.g. product, method and apparatus claims) as long as they share a novel feature in common.  An issue that is commonly raised is that although multiple dependent claims are allowed, such a claim cannot serve as a basis for any other multiple dependent claims.  In practice this means that multiple dependent claims usually require rewriting as non-multiple dependent claims.

China is involved in Patent Prosecution Highway (PPH) programs with the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japanese Patent Office (JPO) and the Korean Patent Office (KPO).  Under this program, it is possible to request accelerated examination of a Chinese patent application based on a corresponding patent application in one of the other jurisdictions where one or more claims have been deemed allowable during examination.

Exploiting the PPH program can reduce examination time by more than half. The Chinese Patent Office advises that the average amount of time from an applicant filing a request for PPH to receiving a first examination report is about 2.5 months and to receiving a final decision for allowance or rejection is 10.1 months.  In contrast, the average time taken under the regular examination procedure about 8 months for a first examination report and 22.2 months for a final decision.

Divisional patent applications

A divisional Chinese patent application can be filed at any time up until 2 months after issuance of a notice of allowance of the parent patent application.  Where the parent application has been rejected or withdrawn then a divisional patent application can be filed up until the deadline for requesting re-examination.

Patent Grant

A modest issuance fee is payable within 2 months of the date of issuance of notice of allowance (i.e. a decision to grant a Chinese patent).

How do I enforce my Chinese Patent if it is infringed?

Chinese Patent Law allows for a procedure known as administrative patent enforcement whereby administrative authorities can act on a patent infringement complaint in relation to the manufacture, importation, use, sale or offering for sale of patented articles within China. Administrative enforcement is traditionally the most commonly used option by patent owners and is handled by provincial or city-level intellectual property offices.  A complaint must be accompanied by some prima facie evidence of infringement and if it is accepted the local administrative authority has wide powers to raid an infringers’ premises and confiscate infringing materials and tooling.  The administrative authority may attempt to mediate a settlement between the parties. However, it is empowered to make binding decisions and to impose sanctions such as destruction of products and tooling and other orders to cease infringement.  Unfortunately, damages are not a remedy that is available through this procedure.

An alternative is to seek redress through the Chinese courts.  Cases are usually begun in the Intermediate People’s Court, although serious cases can be tried in the Higher People’s Court. Interim injunctions are available but if interim relief is granted the plaintiff is bound to initiate proceedings within 15 days thereafter.  The Court can order a wide range of remedies on a finding of infringement, including final orders, destruction of infringing goods and tooling, and compensation or damages.  If the patent owner cannot demonstrate loss then there is a statutory maximum damages award available.

What about renewals or maintenance fees?

In China, patent renewal fees are payable only after a patent has been granted in China.  This means that renewals are not payable whilst a Chinese patent application remains pending.  Once a Chinese patent is granted renewal fees must be paid to the Chinese Patent Office every year on the anniversary of the filing date of the patent application.  If the Chinese patent is based on an International (PCT) Patent Application then the Chinese patent filing date is the filing date of the International (PCT) Patent Application.  The earliest that a renewal fee can be paid on a Chinese Patent is one month before the deadline.

There is a 6 month grace period following the renewal deadline during which the renewal fee may still be paid, subject to payment of additional penalty fees.  The penalty fees are 25% of the amount of the renewal fee, plus any professional charges of the Chinese attorney paying the renewal fee.  The failure to pay a renewal fee and any penalty fees before the end of the grace period will result in the Chinese patent lapsing irrevocably.

Renewal fees must be paid by a qualified Chinese patent attorney or agent who must be appointed by the patent owner and granted power of attorney by the patent owner.  Gestalt Law monitors these deadlines and provides clients with timely reminders to ensure that their Chinese patent renewal deadlines are not missed.

For more information about patenting in China then please contact Daniel McKinley (daniel@gestalt.law).