How do you get a patent in your jurisdiction?
Q: What types of patent are granted in your jurisdiction, and what rights do they confer on owners?
Three types of patent can be granted in China:
- an invention patent, which protects a new technical solution relating to a product, process or improvement thereof;
- a utility model patent, which protects a new technical solution relating to the shape or structure, or both, of a product; and
- a design patent, which protects a new design relating to the shape or pattern, or both, or the combination of the colour with the shape or pattern, of a whole or a portion of a product that is fit for industrial application.
The main rights that are conferred on the owners include:
- the right to exclusively exploit (such as make, use or sell) their own patents and prohibit others from exploiting their patents for production or business purposes;
- the right to assign their patent rights to others or authorise others to exploit their patent rights;
- the right to declare abandonment of their patent rights; and
- the right to institute legal proceedings or request administrative protection if an infringement of the patent right occurs.
Q: What inventions are eligible for patent protection in your jurisdiction?
The general requirement for eligibility is that the invention should be a technical solution (ie, an aggregation of technical means applying the laws of nature to solve a technical problem and achieve a technical effect).
Q: Are there any specific exemptions to patent eligibility?
There are several types of subject matter that are not eligible in China:
- smell, signals (such as sound, light, electricity, magnetism and waves) or energy;
- an invention or creation that is contrary to the law or social morality or detrimental to public interest (eg, gambling facilities);
- scientific discoveries;
- rules and methods for mental activities (eg, business rules, algorithms, mathematical theories, computer languages, traffic rules and operating instructions of apparatuses);
- methods for the diagnosis or treatment of diseases (eg, X-ray diagnostic methods and surgical techniques);
- animal and plant varieties;
- methods of nuclear transformation and the substances obtained therefrom; and
- designs primarily for identification of patterns or colours, or both, in flat prints.
Q: Are there technology-specific eligibility issues that applicants must navigate (eg, in software, business methods, AI, medical diagnostics, pharmaceuticals or medical procedures)?
Regarding business methods, pure business methods are regarded as non-technical and excluded from eligibility. When drafting applications related to business methods, it is important to include technical features that functionally support and interact with the business features or to describe in detail how to realise the business idea by adapting the technical features.
Regarding algorithms including AI, pure algorithms are regarded as mental activities and excluded from eligibility. When drafting applications related to algorithms, it is important to:
- combine the algorithm with a specific technical field and describe how the invention can solve a specific technical problem in the technical field, such as improving the accuracy of image recognition; or
- correlate the algorithm with specific computer hardware to improve the performance of the specific hardware.
Regarding medical diagnostics, a method is not regarded as a diagnostic method if its immediate purpose is not to diagnose a disease or health condition; therefore, when drafting applications related to diagnostics, the claimed method should be a method whose immediate purpose is only to obtain information from the human or animal body as an intermediate result rather than to diagnose a disease or health condition, or a method of processing this information (eg, physique and body parameters or physiological parameters).
Q: What are the time and costs involved in securing a granted patent? Is expedited examination available? Are reduced fees available for certain applicants?
The time and costs may vary for different applications:
- For inventions, as both preliminary examination and substantive examination are conducted, the average time to obtain a patent is relatively long, which may be two years after entering substantive examination. The basic official fee for an invention is Rmb3,450, excluding additional fees such as claiming priority, excess claim fees or requesting re-examination.
- For utility models and designs, only preliminary examination will be performed, and the average time is shorter (around six months to one year). The basic official fee for a utility model or a design is Rmb550, excluding additional fees.
An expedited examination is available if certain conditions are met. There are usually two methods of expedited examination:
- The first is the Patent Prosecution Highway (PPH), which expedites examination based on positive results of an international application (the Patent Cooperation Treaty path) or family applications in other countries (the Paris Convention path). There is no official fee for requesting the PPH.
- The second is prioritised examination, which is applicable for applications in certain key industries (such as energy conservation, biotechnology and intelligent manufacturing) or where potential infringement exists. There is no official fee for requesting prioritised examination.
Reduced fees are available for individuals and enterprises with a relatively low income, as well as institutions, social groups and non-profit scientific research institutions.
Q: What are any specific requirements that a patent specification must meet in your jurisdiction?
For an invention or a utility model, the specification should describe the patent application with clarity, completeness and enablement for those skilled in the art. The specification should use standard terms and be in clear wording and should not contain references to the claims, nor should it contain commercial advertising.
For a design, the specification is called a ‘brief explanation’, which should include the title and use of the product incorporating the design, the essential features of the design and a designated drawing or photograph that best shows the essential features of the design.
Q: What rules govern the filing of provisional applications, continuations or continuations-in-part, divisionals, or any other special type of application?
Divisional applications are available in China while provisional applications or continuations are not available. There are two ways in which a divisional application can be submitted:
- voluntarily submitting a divisional application when the initial patent application is pending; and
- submitting a divisional application according to a lack-of-unity rejection issued by the examiner, which can be submitted when the application that has received the lack-of-unity rejection is pending.
Q: What do applicants need to know about office actions and patent examiner interviews?
For inventions, during the substantive examination, the examiner may issue several office actions before issuing a notification to grant or a rejection decision. The applicant should respond to the office actions by amending the claims/specification and/or making arguments.
Examiner interviews are available during the substantive examination. The examiner may invite the applicant to have an interview to accelerate the examination procedure. The applicant may also request for an interview.
An interview request by the applicant will be granted by the examiner if a useful purpose will be served by the interview, such as to clarify issues, resolve differences and promote understanding. Generally, telephone interviews are easily scheduled between examiners and agents. Face-to-face interviews are also available in China but not very frequently used.
Q: Are there any recent examination trends that patent applicants need to be aware of?
Recently, there have been fewer office actions issued by the examiner for invention applications than in the past. One reason may be that the examiner tends to initiate telephone interviews to discuss simple formality issues with the applicant rather than raise written opinions through an office action. The applicant may voluntarily amend the application documents based on the telephone interview.
Some examiners may also clarify controversial issues with the applicant through telephone interviews. The increasing number of telephone interviews helps applicants get their applications granted earlier.
Q: Is there anything else about the patent filing process that applicants should know?
According to the latest Guidelines for Patent Examination, an examination deferral is available. Applicants may request an examination deferral of one, two or three years for invention and design patent applications, if necessary.
For pharmaceutical-related inventions, applicants should be careful about the requirement on the disclosure of experimental data within the application as originally filed. Post-filing data to prove a technical effect that cannot be derivable from the original disclosure (ie, a new technical effect) would not be accepted in the assessment of both inventiveness and enablement.
Q: Is utility model or petty patent protection or an equivalent available in your jurisdiction? If so, how does the system work and under what circumstances would you advise using it?
A utility model is available in China. If a new technical solution is related to the shape or structure, or both, of a product that is fit for practical use, a patent right for a utility model can be applied. Only products can get patent protection for a utility model. If an applicant intends to protect a method or process, a utility model is not suitable.
Compared with invention applications, only a preliminary examination is performed on utility model applications during the prosecution, so utility models usually have shorter pendency and lower official fees. Utility models are suitable when an applicant wishes to obtain a granted patent rapidly with low costs.
On the other hand, utility models have a shorter patent term of 10 years and are usually less stable than invention patents owing to the absence of substantive examination, despite the lower requirement for inventiveness of utility models; therefore, the applicant must consider both the pros and cons of utility models before making a decision.
What are the major administrative procedures in your jurisdiction?
Q: How can applicants appeal patent office decision?
For a rejection decision issued by the examiner, if the applicant is not satisfied with the decision, he or she may request the Patent Re-examination Board (PRB) of the China National Intellectual Property Administration (CNIPA) to re-examine the case.
Three examiners in the PRB will conduct a collegiate examination to re-examine the case and decide whether the rejection decision should be upheld or revoked. If the applicant is not satisfied with the re-examination decision, he or she may bring a lawsuit to the court against the CNIPA.
Re-examination is a necessary procedure prior to the lawsuit. In other words, the applicant cannot bring a lawsuit against the CNIPA until he or she has received the re-examination decision.
Q: Are oppositions available pre-grant or post-grant? What rules govern standing to oppose a patent and the opposition process?
Oppositions, either pre-grant or post-grant, are not available in China.
If anybody wants to oppose a patent post-grant, he or she can request the CNIPA to invalidate the patent.
If anybody wants to oppose a pending application, he or she can submit public opinions. Any person may submit public opinions to the CNIPA on an application with corresponding reasons, from the date of publication of the application until the date of announcement of the grant of the patent right. The examiner will take into consideration public opinions in the course of substantive examination, but the applicant is not required to respond to the opinions.
Public opinions are only available for invention applications. For utility model applications or design applications, as there are no substantive examinations, public opinions cannot be raised.
Q: What are the processes for re-examination of a patent?
Re-examination in China is a procedure during the prosecution of a patent application. If a rejection decision is issued by the examiner, the applicant may request the PRB of the CNIPA to re-examine the case.
The PRB will transfer the request for re-examination to the previous examiner who made the rejection decision for interlocutory examination. If the rejection decision is revoked as a result of the interlocutory examination, the PRB will make a re-examination decision directly according to the interlocutory examination opinion.
If the rejection decision is maintained by the interlocutory examination, three examiners in the PRB will conduct a collegiate examination to decide whether the rejection decision should be upheld or revoked. If the PRB intends to make an unfavourable re-examination decision, it will issue a board opinion to invite the applicant’s arguments or claim amendments.
Q: What is the process for invalidation or revocation of a patent? Who has standing to request invalidation? How long do inter partes invalidation cases take?
The process for invalidation of a patent mainly includes the following steps:
- A requester submits a request for invalidation with scope, causes and evidence to the PRB of the CNIPA.
- The PRB transfers the documents of the request for invalidation to the patentee and requires the patentee to make a response to the request for invalidation.
- The PRB may decide to take oral proceedings for the request for invalidation, at the request of the parties or in accordance with the needs of the case.
- The PRB will conduct a collegiate examination and will make an invalidation decision.
Any person who is eligible to institute a civil action has standing to request invalidation. If the patentee files an invalidation request against his or her own patent, the following conditions should be met:
- the scope of invalidation should only be part of the patent;
- the evidence should come from publications; and
- the requester should include all co-patentees of the patent.
Generally, inter partes invalidation cases take six months from the invalidation request but may be longer, depending on the circumstances of the case.
Q: How can opposition, re-examination or invalidation decisions be appealed?
For re-examination decisions, the applicant may bring an administrative lawsuit against the CNIPA in the Beijing Intellectual Property Court.
For invalidation decisions, the patentee and/or the requester in the invalidation procedure may also bring an administrative lawsuit against the CNIPA in the Beijing Intellectual Property Court. The other party in the invalidation procedure can attend the lawsuit as the third party.
Q: Is administrative enforcement of patents possible?
Yes, under any of the following circumstances, administrative enforcement of patents is possible:
- the patentee does not exploit or does not sufficiently exploit the patent without any justified reason within a reasonable long period;
- the exercise of the patent right by the patentee is legally determined as an act of monopoly, for the purpose of eliminating or reducing adverse effects of the act on competition;
- a national emergency or an extraordinary state of affairs occurs, or where the public interest so requires;
- for the purposes of public health, enforcing manufacture of a pharmaceutical product that has been granted patent right is necessary; or
- it is required for the purpose of facilitating enforcement of new technologies.
Q: Does your jurisdiction grant patent-term extensions?
Yes. According to the 2021 Patent Law, patent term adjustment (PTA) and patent term extension (PTE) are available:
- PTA: for an invention patent that is granted after four years of the date of filing and after three years of the date of requesting substantive examination, the patentee can request patent term compensation for unreasonable delays caused by the CNIPA in the prosecution.
- PTE: to compensate for the time taken for review and approval of new drugs for marketing, the CNIPA may, at the request of the patentee, compensate him or her for the duration of the patent right for a period of no more than five years, and the total effective duration of the patent right shall not exceed 14 years from the marketing approval of the new drugs.
Q: Is there anything else about patent administrative procedures that patent owners and challengers should know?
Open licences are regulated by the 2021 Patent Law. A patentee may voluntarily make a written statement to the CNIPA that he or she is willing to license any entity or individual to exploit his or her patent with a payment method and standard of the licence fee.
The CNIPA may make a public announcement for the licence, and an open licence is granted.
Any entity or individual who intends to implement a patent with an open licence should notify the patentee in writing and pay the licence fee before he or she can obtain the licence. The patentee granting the open licence may grant a common licence to the licensee but may not grant a sole or exclusive licence.