China: patent prosecution

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 patents are granted in China: invention patents, utility model patents and design patents. For invention and utility model patents, they confer on the owner exclusive rights to stop others from manufacturing, selling, offering for sale, using or importing the patented product, and they stop others from using the patented process or using, offering to sell, selling or importing the product directly obtained by the patented process. For design patents, the exclusive rights include stopping others from manufacturing, selling, offering for sale or importing the patented product.

Q: What inventions are eligible for patent protection in your jurisdiction?

In China, any inventions are eligible for patent protection except:

• scientific discoveries;
• rules and methods for mental activities;
• methods for the diagnosis or the treatment of diseases;
• animal and plant varieties;
• nuclear transformation methods and substances obtained in the process of nuclear transformation; and
• designs of two-dimensional printing goods, particularly their pattern or colour, or a combination of the two, which serve mainly as indicators.

Q: Are there any specific exemptions to patent eligibility?

For processes used in producing animal and plant varieties, patent rights can be granted. Designs of two-dimensional printing goods are patentable if they do not mainly serve as indicators.

Q: Are there technology-specific eligibility issues that applicants must navigate (eg, in software, business methods, AI, medical diagnostics, pharmaceuticals or medical procedures)?

For inventions in the fields of software, business methods and AI, only those solving technical problems by employing technical solutions and achieving technical effects can be granted patent rights, whereas mere rules of activities or commercial rules cannot be granted patent rights. In addition, medium-storing computer programs are now patentable in China.

Q: What are the time and costs involved in securing a granted patent? Is expedited examination available? Are reduced fees available for certain applicants?

For invention applications, on average it takes 19 months for them to be approved after the substantive examination starts. For utility model and design applications, a patent can generally be obtained within 6 to 12 months of filing. The most popular expediting examination programme is the Patent Prosecution Highway. The Chinese patent system does not differentiate between small and large entities for foreign applicants in terms of fees, and thus, no reduced fees are available for foreign applicants.

Q: What are any specific requirements that a patent specification must meet in your jurisdiction?

In short, a patent specification should fulfil two important requirements in China:

• sufficient disclosure: the description should be detailed enough for a person skilled in the art to make the invention; and
• support for claims: the description should disclose adequate embodiments or examples to support a broad generalised claim.

Q: What rules govern the filing of provisional applications, continuations or continuations-in-part, divisionals, or any other special type of application?

In China, there are no provisional applications, continuations or continuations-in-part, and only divisional applications are available, which can be filed at any time before the close of the prosecution of the parent application as long as the divisional application does not go beyond the disclosures of the parent application. If unity of invention arises in the divisional application, it is allowable to derive a second-generation divisional application after the close of the prosecution of the parent application.

Q: What do applicants need to know about office actions and patent examiner interviews?

For each office action, the applicant can respond by presenting arguments with or without amendments, but they cannot appeal the action to another authority unless a rejection is received. Currently, the examiner is encouraged and willing to conduct interviews with applicants or their agents by telephone to resolve formality issues or even discuss the patentability of the application to achieve grant as soon as possible. The applicant has four months to present the response for the first office action and two months for other subsequent office actions during the examination. Either deadline of four or two months can be extended by up to two months with surcharges.

Q: Are there any recent examination trends that patent applicants need to be aware of?

In recent years, the examiner has become more and more rational in using common knowledge to reject the inventive step of an application. Further, the applicant can request that the examiner provides written evidence of common knowledge if it is a key feature of the technical solution. The Chinese examiner will also check the prosecution history in other countries, particularly the EPO, USPTO, Japan Patent Office and Korean Intellectual Property Office, and is not willing to grant a broader scope of protection than other patent offices.

Q: Is there anything else about the patent filing process that applicants should know?

It is noteworthy that:

• in China the applicant may choose to delay the examination of an invention patent application for one, two or three years upon request of examination;
• for design applications, the choice of delayed publication for one, two or three years is available, and partial designs can be protected in China; and
• by using the Paris Convention route, the applicant may file an invention patent application and a utility model application at the same time to get quick protection for the utility model and get stable protection for the invention patent, while the applicant may only chose to enter a Patent Cooperation Treaty application into the Chinese national phase as either an invention or a utility model.

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?

Utility model patents are available in China and can be protected for 10 years. Utility model patents only protect the improvement of the structure or configuration of the product, and cannot protect the method or process. A utility model patent can be obtained after preliminary examination and is not subject to substantive examination. However, the examiner is stricter now than in previous years and often challenges patentability by quickly searching and citing references if they believe the application is obviously not new or inventive.

What are the major administrative procedures in your jurisdiction?

Q: How can applicants appeal patent office decision?

If the applicant receives a decision of rejection issued by the Chinese National Intellectual Property Administration (CNIPA), he or she may file a request for re-examination with CNIPA's Department of Patent Re-examination and Invalidation within three months of receipt of the decision of rejection. The documents to be filed shall comprise the request for re-examination, arguments, necessary evidence, procedural documents and possibly amendments, including power of attorney.

Q: Are oppositions available pre-grant or post-grant? What rules govern standing to oppose a patent and the opposition process?

There is a quasi-pre-grant opposition in China called 'third-party observations', which is an ex parte process. The Chinese Patent Law allows the public to file third-party observations together with evidence and reasoning against an invention application after it is published and before it is granted. However, these third-party observations are provided only for the examiner’s reference, and the examiner is not obliged to respond or follow-up on these observations.

The post-grant opposition in China is called an 'invalidation request', which is an inter partes process. After the patent is granted, anyone holding that the patent does not comply with the provisions of the Chinese Patent Law can file a request for invalidation before the CNIPA. The patent that is announced as invalid after the invalidation process is deemed non-existent from the very beginning.

The most common grounds for the third-party observations and invalidation requests include lack of novelty or inventive step, clarity issues, insufficient disclosure and the claim not being supported by the description.

Q: What are the processes for re-examination of a patent?

After the applicant receives a decision of rejection from the examiner, he or she can file a request for re-examination to Department of Patent Re-examination and Invalidation within three months of the receipt of the decision. The request for re-examination will first be sent to the former examiner to see whether he or she changes his or her decision in view of the arguments or amendment presented. If the former examiner changes his or her decision, the re-examination process will end and the application will be continuously examined by the former examiner. If the former examiner insists on his or her prior decision, the request for re-examination will be examined by a panel consisting of three experienced examiners different from the former examiner. The panel, if it is not convinced by the applicant, will issue a notification of re-examination and give the applicant further chances to present arguments or amendments. Usually, after one or two notifications, a decision of re-examination, which may revoke the decision of rejection or uphold the decision of rejection, will be issued.

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?

After the granting date of a patent, anyone holding that the patent does not comply with the provisions of the Chinese Patent Law can file a request for invalidation before the CNIPA. The party intending to file a request for invalidation could decide, as required, whether to file the request in its true name or through a straw man. Examination of a request for invalidation comprises formal examination and collegiate examination. The formal examination is to examine the object of the request, the eligibility of the petitioner, and the scope, causes and evidence supporting the request, among other things. After passing through the formal examination, the Department of Re-examination and Invalidation will transfer documents to the parties and assign a time limit (usually one month) for a response. The petitioner could submit supplementary evidence within one month of the date of filing the request, and the patentee could file an answer or evidence within the assigned time limit. A panel will be set up to examine the scope, causes and evidence provided by the parties, which is called the collegiate examination. The panel can decide whether the collegiate examination will be conducted in written form or via oral proceedings. The whole process usually lasts six to nine months.

Q: How can opposition, re-examination or invalidation decisions be appealed?

As for the pre-grant opposition (called third-party observations in China), there is no ability to appeal.

As for the re-examination and invalidation decisions, a party unsatisfied with the decision could file a lawsuit before the Beijing IP Court within three months of receipt of the decision. The Beijing IP Court would have a trial through one or several rounds of court hearings and then make a judgment of first instance. Any party unsatisfied with the judgment could file an appeal before the Intellectual Property Tribunal of the Supreme Court. The judgment made by the Supreme Court would be the final judgement.

Q: Is administrative enforcement of patents possible?

A granted patent can be enforced via two approaches: administrative enforcement and judicial enforcement. Administrative enforcement means that the patentee or the interested party could file an administrative complaint with the administrative authority, such as the local IP office or State Administration of Market Regulation, to require the infringer to stop the infringement. The administrative authority would conduct an examination and determine whether the infringing product falls into the scope of protection of the patent-in-suit. If yes, the authority will order the infringer to stop the infringement. The authority has no right to require the infringer to compensate for damage caused by its infringement, which is a defect of the administrative enforcement. Any party unsatisfied with the decision made by the administrative authority can file a lawsuit before the local court.

Q: Does your jurisdiction grant patent-term extensions?

If a patent for invention (granted after 1 June 2021) is granted after three years from the date of filing a substantive examination and after four years from the date of filing a patent application, the CNIPA, on request of the patentee, could grant a patent-term extension to compensate the unreasonable delay during the process, unless the delay was caused by the applicant. The request for patent-term extension should be filed within three months since announcement date of the patent.

Starting from 1 June 2021, for the patent of new approved drug to be launched in the Chinese market, a patent-term extension is also available, which must not be more than five years, and the entire term of the patent after the approval of the drug must not be over 14 years. The patent-term extension request for a drug-related patent should be filed with the CNIPA within three months of the approval date of the drug.

Q: Is there anything else about patent administrative procedures that patent owners and challengers should know?

In the request for invalidation, the patentee is allowed to make amendment to the claims. However, the amendment shall be limited to deletion of a claim, combination of claims or technical features recited in the claims, and deletion of a technical solution. Before the CNIPA makes a decision on the request for invalidation, the patentee may either delete a claim or a technical solution contained in a claim. The patentee may combine claims and technical features only in response to the request for invalidation, or to the causes for invalidation or evidence added by the petitioner, or to causes for invalidation or evidence not mentioned by the petitioner but introduced by the Department of Re-examination and Invalidation.

As for administrative litigation before the Beijing IP Court, procedural documents such as power of attorney, identity certificates of legal representatives, and the company register or identifications must be notarised by local notary and legalised by the Chinese embassy or consulate if the plaintiff is a foreign entity or individual. Considering the time required for notarisation and legalisation, the Beijing IP Court provides a three-month extension of the time limit for filing the litigation as provided by the Chinese Patent Law.

Please note that these questions serve as a framework for each article. Authors may give greater emphasis to those questions that address key issues within the jurisdiction, at their discretion. Specific focus should be made to the most recent developments in your market.