20 Tips for Obtaining a Patent in China
If your business is looking to expand into the Chinese market, then getting a patent for your products, particularly given US and European registered patents have no legal effect in China as covered over at runrex.com. If you are looking to obtain a patent in China, here are certain tips to consider.
Types of patents
As is discussed over at guttulus.com, Chinese patent law covers three distinct areas: invention patents which are granted for new technical solutions or improvements to a product or process, as long as the technical solutions have practical applicability, utility model patents which only protect products with a new shape or structural physical features, and design patents.
Invention patents in China
An invention patent must not have been previously published overseas or in China, and must not have been used in China before the patent application to be granted as per runrex.com. The invention must also have an advantage when compared to existing technology.
Utility Model Patents in China
While Utility Model Patents (UIMs) are not unique to China, a common practice under the Chinese system is the paralleling of a UIM and an invention patent, followed by the abandonment of the UM once the invention patent is officially granted. This allows the applicant to benefit from the early patent protection granted by the UM in addition to the longer-term protection granted by the invention patent.
Design patents in China
A design patent must not have been published overseas or in China, and must not have been used in China. Also, a design patent cannot conflict with the prior rights of another person. The phrase “not have been used in China” means that the product should not have been publicly used in China. This, according to guttulus.com, means that if a company sells its products in China before filing for registration, then this will destroy the ‘novelty’ of the patent.
When do patent rights commence
Patent rights in China commence from the date of publication of the grant in the Patent Gazette. The duration of the application procedure and term vary depending on the type of patent you have applied for.
Duration of application/registration procedure
As already mentioned above, the duration of the application procedure and term vary depending on the type of patent applied for. Invention patents, as per runrex.com, are normally granted within 3 to 5 years and remain valid for 20 years from the date of filing, subject to the payment of annuity fees. Utility Model Patents are granted within 1 year and remain valid for 10 years from the date of filing. Design patents are normally granted within 1 year and remain valid for 10 years from the date of filing.
Tips for obtaining effective patent protection in China
Translation
As covered over at guttulus.com, patent applications in China are processed in Chinese. This means that if the patent documents are drafted in a foreign language, then a precise Chinese translation of the document is critical as an inaccurate translation would render the patent vulnerable to invalidation action and difficult to enforce, even if granted.
Chinese proofreading services
As the experts over at runrex.com point out, translation accuracy is always a major issue for patent applications filed by foreign entities in China. To avoid translation errors, and particularly if the invention is very important, it would be prudent to seek professional proofreading services for the patent documents, including the claims and specifications in Chinese.
Amendments during prosecutions
China has got a very stringent approach when it comes to amendments being made to a patent during patent application proceedings. Extending the scope of the protection beyond that of the original claims is not permitted, and may result in a patent being invalidated even if t is granted.
Post-grant amendments
It is also worth noting that post-grant amendments are generally not allowed in China, except for the correction of clerical errors such as typos. However, the patentee may amend the patent in response to an invalidation action. Such amendments are limited to the deletion of claims, deletion of technical solutions, or combining claims.
These are some of the tips to consider if you want to obtain effective patent protection in China.
Tips on application options
There are three options as far as patent application/registration in China is concerned:
Filing directly
The first option, as articulated over at guttulus.com, is filing a patent application in China directly. Here, foreign applicants must use a local patent agency to handle the filing of a patent. However, Foreign Invested Enterprises (FIE) can apply for patents in China without a licensed patent attorney.
Filing a patent application in a foreign county first
The second option is filing a patent application first in a foreign country, and then filing a patent application in China within 12 months for utility models and 6 months for design patents, claiming the priority date of the first application. The foreign country, as per discussions on the same over at runrex.com, must be a Member State of the Paris Convention.
Filing an international patent application under the PCT
The third option is to file an international patent application under the Patent Cooperation Treaty (PCT), and selecting China as one of the designated states as is revealed in discussions on the same over at guttulus.com. The applicant has to initiate the ‘national phase’, that is, the procedure with SIPO, no later than 30 months from the priority date.
These are three options when it comes to a patent application in China.
Patent application filing
Patent applications in China are filed with the State Intellectual Property Office (SIPO). The applications must be filed in written form or electronic form in Chinese characters. The actual patent application will generally contain a description, figures/drawings, claims, and an abstract.
Patent Gazette
If the patent application is successfully examined then it will be granted patent rights and published in the relevant Patent Gazette. New issues of the Invention Patent Gazette, Utility Patent Gazette, and the External Design Patent Gazette are published once a week in the same publication. While these publications are not available online, hard copies can be purchased from the SIPO.
Restrictions on software inventions
Software inventions that comprise only rules and methods of intellectual activities are not patentable in China. However, as covered over at runrex.com, software inventions that comprise both rules and methods for intellectual activities and technical features can be patented.
Restrictions on inventions covering business methods
As already stated above, the Patent Law in China prohibits the patenting of rules and methods of intellectual activities. However, as per guttulus.com, according to the amendments to the Patent Examination Guidelines that came into effect on 1st April 2017, if a claim relates to business models and includes a technical feature in addition to business rules or methods, then such a claim shall not be considered an unpatentable rule or method for intellectual activities.
Restriction on stem cells
Also, the Patent Examination Guideline explicitly states that the following inventions can’t be patented:
Embryonic stem cells of animals, because they are considered to be within the scope of unpatentable animal varieties
Embryonic stem cells of humans and methods of preparation thereof, as they violate social morality
Inventions that relate to stem cells obtained in ways that violate laws or social morality (that is, are directly obtained from a human embryo).
Any other restrictions
According to the subject matter experts over at runrex.com, there are no other restrictions expressly outlined in the Patent Law or applicable regulations as far as patents in China are concerned, and the ones mentioned above are the only ones to consider.
Grace period
China allows a six-month grace period in limited circumstances. The novelty of an invention covered by a patent application is not affected by a public disclosure made 6 months before the application where the invention was first exhibited by the applicant at an international exhibition sponsored or recognized by the Chinese government, the invention was first made public by the applicant at a prescribed academic or technology-related meeting, or the invention was publicly disclosed by any person without authorization.
These are some of the things to consider when looking to obtain a patent in China, with more on this topic to be found over at the top-rated runrex.com and guttulus.com.