10 May 2012
Application for Patent in China
Patent applications are subject to examination and approval in China in accordance with its Patent Law and the Implementing Regulations of the Patent Law. For invention patents, early announcement of the application can be made upon request. Utility model and design patents are examined only for compliance with formal requirements.
The State Intellectual Property Office (SIPO) is responsible for patent work nationwide. It handles and examines patent applications and grants patent rights in accordance with the law. Patent offices under the governments of provinces, autonomous regions and municipalities directly under the central government are responsible for patent administration work in their respective areas as well as handling matters involving foreign-related patents. They are also responsible for patent enforcement, as well as settling patent disputes, and investigating and penalising patent infringement acts in accordance with law.
FIEs applying for patents may either submit their applications direct or appoint designated patent agents. Due to the technical complexity involved in patent application, FIEs are advised to appoint a legally established patent agency in order to better protect their rights. Foreign enterprises applying for patents in China should appoint those agents authorised by SIPO to deal with foreign applications.
Points to Note in Application for Patent
Documents to be submitted for patent application must be in the Chinese language. Where no generally accepted translation in Chinese can be found for a foreign name, foreign place or scientific or technical term, the one in the original language shall also be indicated. Where any certificate and certified document submitted in accordance with requirements are in foreign languages, and where SIPO deems it necessary, it may request a Chinese translation of the certificates and the certified documents to be submitted within a prescribed time limit; where the translation is not submitted within the specified time limit, the certificates or certifying documents shall be deemed not to have been submitted.
Where there are more than two applicants and no patent agent is appointed, the first applicant designated in the application should be the representative unless otherwise stated in the application. Application for a patent for invention or utility model should be limited to one invention or utility model. Two or more inventions or utility models belonging to a single general inventive concept may be filed as one application, but these inventions should be technically inter-related and contain one or more of the same or corresponding special technical features. "Special technical features" mean those technical features that define a contribution which each of those inventions or utility models, considered as a whole, makes over the prior art.
One patent will only be granted for the same invention-creation. Nevertheless, where on the same day the same applicant files for both a patent for utility model and a patent for invention for the same invention-creation, and if the patent for utility model which has been granted earlier has not terminated and the applicant declares the abandoning of that applicable patent for utility model, a patent for invention can be granted.
Application for a patent for design should be limited to one design incorporated in one product. Two or more designs which are incorporated in products belonging to the same class and are sold or used in sets may be filed as one application. The number of similar designs contained in an application for patent for design shall not exceed 10.
Procedures for Patent Application and Documents Required
(a) Patent Application and Documents Required
When a patent application is filed, the applicant should submit the documents as required for the type of patent concerned. If a patent agent is appointed to handle the application, an authorisation letter is also required.
-
Documents required for application for patent for invention or utility model (in duplicate copies):
-
A letter of request -- stating the title of the invention or utility model, the name of the inventor or creator, the name, address, nationality and country (or region) of registration of the applicant, and other related information.
-
A description and its abstract -- setting forth the invention or utility model in a manner sufficiently clear and complete so as to enable a person skilled in the relevant field of technology to carry it out. The description should include: technical field, background art, contents of the invention, etc. Where necessary, drawings are required; the scale and the distinctness of the drawings should be such that a reproduction with a linear reduction in size to 4cm x 6cm would still enable all details to be clearly distinguished. The abstract should state briefly the main technical points of the invention or utility model. The whole text of the abstract should contain no more than 300 words. There should be no commercial advertising in the abstract.
-
Claims -- these should be supported by the description and should state the extent of the patent protection asked for. If several types of protection are being claimed, they should be numbered in serial in Arabic numerals. Chemical and mathematical formulae may be included but illustrations are not allowed. The claims should contain independent claims and may also include subordinated claims. For an invention-creation accomplished by relying on genetic resources, the applicant shall, in the patent application documents, indicate the direct and original source of the genetic resources. If the applicant cannot indicate the original source, s/he shall state the reasons.
-
-
Documents required for application for patent for design (in duplicate copies):
-
A letter of request -- stating the product incorporating the design and the class to which that product belongs.
-
Drawings or photographs of the design -- the size should be no smaller than 3 cm x 8 cm and no larger than 15 cm x 22 cm.
-
A brief description of the design.
-
A prototype or model of the product incorporating the design should be submitted where necessary. The volume of the prototype or model submitted should not exceed 30cm x 30cm x 30cm, and its weight should not surpass 15 kilograms. Articles that are easy to get rotten or broken or articles that are dangerous should not be submitted as prototype or model.
-
-
Documents required for claiming right of priority:
-
Conditions of claiming right of priority: Within 12 months from the date the applicant first files an application for an invention or utility model patent in a foreign country, or within six months from the date the applicant first files an application for a design patent in a foreign country, s/he shall file an application for a patent in China for the same subject matter, s/he may enjoy the right of priority in accordance with the agreements concluded between the said foreign country and China, or in accordance with the international treaties to which both countries have acceded, or on the principle of mutual recognition of the right of priority.
-
Document submission: A written declaration of the right of priority and submit, within three months, duplicates of the patent application documents filed for the first time. Where no written declaration is submitted or no duplicates of the patent application documents are submitted at the expiration of the specified time limit, the applicant shall be deemed to have waived the right of priority.
-
(b) Approval Procedures
-
Approval of patent for invention: after SIPO receives an application for a patent for invention and finds it to be in conformity with the requirements of the law upon preliminary examination, it will publish the application after 18 months from the date of filing. Upon the request of the applicant, SIPO may publish the application earlier. Upon the request of the applicant for a patent for invention, made at any time within three years from the date of filing, SIPO will proceed to examine the application as to substance. If, without any justifiable reason, the applicant fails to meet the time limit for requesting examination as to substance, the application will be deemed to have been withdrawn. SIPO may, on its own initiative, proceed to examine any application for a patent for invention as to substance when deemed necessary.
-
If no cause for rejection of the application for a patent for invention is found after examination as to substance, SIPO will make a decision to grant the patent right for invention, issue the certificate of patent for invention, and register and publish it. The patent right for invention comes into effect on the date of the publication.
-
Approval of patent for utility model and design: if no cause for rejection of the application for a patent for utility model or design is found after preliminary examination, SIPO will make a decision to grant the patent right for utility model or the patent right for design, issue the relevant patent certificate, and register and publish it. The patent right for utility model or design comes into effect on the date of the publication.
-
At the time when a request for examination as to substance is made, and when, within the time limit of three months after receipt of SIPO’s notification on the entry into examination as to substance of the application, the applicant for a patent for invention may amend the application for a patent for invention on his or its own initiative. Within two months from the date of filing, the applicant for a patent for utility model or design may amend the application for a patent for utility model or design on its or his own initiative.
Assignment and Transfer of Patent Application Right and Patent
Patents and the right to apply for a patent are assignable. Any assignment of patents or patent application right by a Chinese entity or individual to a foreigner is subject to the joint approval of the State Council’s foreign trade and economic cooperation department and science and technology administration department. If a patent is transferred for other reasons, the interested party should complete the procedures for the change of patentee with the State Council’s patent administration department by presenting the relevant supporting documents or legal documentation.
Exploitation of Patent
The patentee may make the patented product or use the patented process, or s/he may authorise another person to make the patented product or use the patented process. The licensing of patent rights to other parties can take the form of voluntary licensing or compulsory licensing.
(a) Voluntary Licence for Exploitation of Patent
On the basis of voluntary negotiation, a patentee (licensor) may sign a licensing contract with another party (licensee) for the conditional exploitation of the patent by the licensee for a fee within a prescribed scope, duration and geographic location.
The licensing contract signed by both parties should be in written form and filed with SIPO within three months from the date of signing.
(b) Compulsory Licence for Exploitation of Patent
In accordance with the relevant provisions of the Patent Law (2008), SIPO may grant a compulsory licence to exploit a patent or a utility model patent under one of the following circumstances:
-
When it has been three years since the date the patent right is granted and four years since the date the patent application is submitted, the patentee, without legitimate reasons, fails to have the patent exploited or fully exploited, SIPO may grant a compulsory licence to exploit the patent for invention or utility model.
-
Where an enterprise which is qualified to exploit the invention or utility model has made requests for authorisation from the patentee of an invention or utility model to exploit his patent on reasonable terms and such efforts have not been successful within three years after the grant of the patent right, SIPO may, upon the application of that enterprise, grant a compulsory licence to exploit the patent for invention or utility model.
-
Where the patentee's exercise of the patent right is in accordance with law, confirmed as monopoly and its negative impact on competition needs to be eliminated or reduced, SIPO may grant a compulsory licence to exploit the patent for invention or utility model.
-
Where a national emergency or an extraordinary state of affairs occurs, or where the public interest so requires, SIPO may grant a compulsory licence to exploit the patent for invention or utility model.
-
For the benefit of public health, SIPO may grant a compulsory licence for the manufacture of a drug for which the patent right has been granted, and for its export to countries or regions that conform to the provisions of the relevant international treaties to which China has acceded.
-
Where the invention or utility model for which the patent right is granted is technically more advanced than another invention or utility model for which a patent right has been granted earlier and the exploitation of the later invention or utility model depends on the exploitation of the earlier invention or utility model, SIPO may, upon the request of the later patentee, grant a compulsory licence to exploit the earlier invention or utility model. By the same token, SIPO may, upon the request of the earlier patentee, also grant a compulsory licence to exploit the later invention or utility model.
-
Where the manner or scale of the exploitation of patent by the patentee and/or licensee cannot satisfy the demands of the domestic market for the patented product or patented process, SIPO may grant a compulsory licence to exploit the patent for invention or utility model.
-
Where an invention involved in a compulsory licence is semi-conductor technology and the exploitation thereof is limited to the purpose of public interests, SIPO may grant a compulsory licence to exploit the patent for invention or utility model.
Points to note:
-
The entity or individual that is granted a compulsory licence for exploitation does not have an exclusive right to exploit and does not have the right to authorise exploitation by any other parties.
-
The entity or individual that is granted a compulsory licence for exploitation should pay to the patentee a reasonable exploitation fee, the amount of which will be fixed by both parties in consultation. If the parties fail to reach an agreement, SIPO will adjudicate.
-
If the patentee is not satisfied with the decision of SIPO granting a compulsory licence for exploitation, or if the patentee or the entity or individual that is granted the compulsory licence is not satisfied with the adjudication made by SIPO regarding the exploitation fee payable for exploitation, s/he may, within three months from the receipt of the notification, institute legal proceedings in the people’s court.
Duration of Patent Right
The duration of patent right for inventions is 20 years, and the duration of patent right for utility models and designs is 10 years, counted from the date of filing of the patent application.
Comments (0)