Patent Application in China

Evershine IPO can help you to file your patent in China at a reasonable price.

China is a member and has ratified the following agreements

  1. Paris Convention for the Protection of Industrial Property (since 1985)
  2. Patent Cooperation Treaty (since 1994)
  3. Convention Establishing the World Intellectual Property Organization (WIPO, since 1980)
  4. Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS, since 2001)

Coverage – What Can be Patented Under Chinese Patent Law?

Under the Patent Law, patent protection is available in three forms – invention patents, design patents and utility models. An invention patent has a term of 20 years and is analogous to a utility patent in the United States. A design patent has a term of 10 years and is similar in function and scope to a design patent in the United States (and may constitute a comparatively quick and easy avenue to afford protection to eligible items). The third patent variety, a utility model, also has a term of only 10 years and is most similar to a U.S. improvement patent. Protection for all three patent varieties may be curtailed for failure to pay administrative fees or if the owner renounces the patent.

Approval for patent protection is subject to the following criteria

  1. Novelty
  2. Inventiveness
  3. Practical Applicability

Generally, an invention is novel if before the date of filing, no identical invention had been publicly disclosed in China or abroad. Inventiveness is defined as an improvement of prominent substantive features and notable progress compared to existing technology. Practical applicability is defined as an invention that can be made or used to produce effective results.

What Cannot be Patented under Chinese Patent Law? The Patent Law provides that the following works will not be afforded patent protection

  1. Scientific discoveries
  2. Rules or 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 atomic transformation
  6. Anything immoral or detrimental to the public interest

Software itself cannot be patented, although software combined with a computer or technique intended to solve a technical problem may be.
Registration

When deciding whether to register a patent in China, companies should keep the following in mind

Patents are territorial; only a Chinese patent has the potential to provide protection against infringement in China
Invention patents in China are valid for 20 years, whereas both design and utility patents are valid for 10 years in China
Both Design and Utility Model applications are reviewed only for compliance with application formalities and not for substance
Foreign applications must be made through registered patent agents

The Patent Registration Process

Step 1: Obtain Qualified Counsel

Patents are complicated. In this era of global competition, it can be important to seek patent protection in multiple countries, and because disclosure (inadvertent or otherwise) in one country may result in a loss of patentability in others, inventors should obtain legal advice as soon in the process as possible. Moreover, residents of Patent Cooperation Treaty (PCT) member states (which include the United States and more than one hundred other countries) may file an “international patent application” that can reduce the complexity of overseas filings and allow an applicant greater time to decide in which countries to file. A qualified patent attorney will be able to help you navigate these complicated matters and select appropriate overseas counsel and agents to assist you.

Step 2: Determine Whether You Have a Priority Claim

A person who has filed an application for an invention or utility model patent in any country that is a member of the Paris Convention may, within one year after that filing, file subsequent patent applications in other countries claiming the filing date of the first application. The corresponding grace period for design patents in China is six months. Priority filing dates allow an inventor to avoid the possibility that a patent in one country could be granted to someone else in a foreign country, or that disclosure in one country subsequent to application could render an invention part of the prior art and thus unpatentable in other countries. Within these limitations, patent protection in the PRC is generally based on the “first to file” principle, in contrast to the “first to invent” system employed in the United States.

Step 3: Select a Reputable PRC Patent Agent

Foreign applicants without a business office in China are required to submit patent applications through officially designated agents. Chinese businesses do not face this same requirement. PRC patent agents should be able to advise you on the intricacies of filing in China and may form part of a worldwide patent prosecution team for a particular invention. Ideally such a patent agent should be familiar with the subject area of the patent.

Step 4: Prepare the Required Paperwork

Chinese patent applications, like those in other countries, are complicated and require substantial documentation. Applications must be in Chinese and include any relevant drawings, details of any priority claim, and a specification.

A specification must set forth the claims of the patent, including the:

  1. Title
  2. Designation of relevant technical field
  3. Prior Art
  4. Purpose of the invention
  5. Enabling requirement
  6. Best mode
  7. Other administrative and ancillary information

Design patent applications require drawings or photographs of the design. If an applicant has filed an international patent application under the PCT that designates China, the applicant must provide a Chinese translation within thirty months of the priority date.

Step 5: Submit the Application

Patents are filed with the State Intellectual Property Office (SIPO) in Beijing. SIPO offices at the provincial and municipal levels are responsible for administrative enforcement, not examination, and thus have no role in the prosecution process.

Step 6: Preliminary Examination

Once the application is submitted it will undergo a preliminary examination to ensure it meets the statutory filing requirements. If there is “no cause for rejection” patents for utility models or designs will issue. Applications for invention patents that survive preliminary examination will continue to a substantive examination following a request by the applicant.

Step 7: Publication (for Inventions)

SIPO will normally publish applications for invention patents eighteen months after filing unless the applicant requests an earlier publication or withdraws the application. After publication, the contents of an application are considered part of the prior art.

Step 8: Substantive Examination (for Inventions)

Applicants for invention patents have up to three years from the date of application to request a substantive examination. Applicants must provide relevant prior art. At the discretion of the examiner, the results of any prior art search conducted by foreign patent authorities may also need to be disclosed. SIPO may request amendment of any part of the application found not to conform to the Patent Law.

Step 9: Granting of Patent Right

If after the relevant examination (preliminary for utility models and designs, substantive for inventions) SIPO concludes that the application is in conformity with the Patent Law, it will issue a certificate of invention, register the patent, and publish its decision. Patent rights are effective as of the date of publication.

Step 10: Reexamination

An applicant dissatisfied with SIPO’s examination of a patent application may, within three months of receiving notification of the rejection, seek reexamination by the semi-independent Patent Reexamination Board (PRB). If the applicant is dissatisfied with the PRB’s decision, legal proceedings may be instituted within three months in the People’s Court, generally the Administrative Division of the Beijing No. 1 Intermediate Court.

In addition, any entity or individual may request the PRB to invalidate any patent at any time. Appeals from PRB decisions may be heard by the Civil Division of the People’s Court. Individuals seeking to contest or defend the validity of a patent may want to carefully evaluate the expertise of the court that would be hearing the case, as well as its record and experience in patent decisions.


Please feel free to contact us for detailed informaion.

Evershine CPAs Firm//Evershine IPO (Patent Attorney) Firm

Dale Chen Principal Partner CPA/Patent Attorney/MBA
Office Tel: +886-2-2717-0515 E100
Skype: daleccchen
e-mail:dalechen@evershinecpa.com

or
Taipei, Taiwan
Address: 6th Floor ,378, Chang Chung Rd, Taipei City, Taiwan
J. R. Yang Patent Engineer
Email:jryang@evershineipo.com
Office Tel: +886-2-27170515 Ext: 121
Mobile: +886-963-910-879


or
Beijing, China
Address: 17D, Oriental Kenzo Apartment C, No. 48 Dongzhimen Outer St. Dongcheng District, Beijing, China
Manager Zoe Zhou (In both English and Chinese)
Email:sales.beijing@evershinecpa.com
Office:+86-10 -8454-9221
Mobile:+86-186-138-57525

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