1c) China Flashcards
Types of patent
Standard patent - 20 year term
Utility model – 10 year term
Design patent – 10 year term
Same invention cannot be patented by both a standard patent and utility model
Patentability - nov and inv step
Absolute novelty (since Oct 2009)
Pre-filed post published Chinese patent (or PCT which enters CN national phase) novelty only prior art
Inventive step: must have prominent substantive features compared to the state of the art and must represent
a considerable progress. New since 1 Feb 2020:
o When assessing inventive step, Examiners should adopt a problem/solution approach, and consider
whether distinguishing features of the claimed invention help to achieve a technical effect that is
required to solve a problem.
o The assessment of inventive step should be based on consideration of the claimed invention as a
whole, not just on the basis of particular technical features.
o Where the applicant questions the common general knowledge cited by the Examiner in an office
action, the Examiner should provide supporting evidence or reasoning. If the Examiner raises an
inventive step objection based on an assertion of common general knowledge, the Examiner should
normally provide evidence to support such an assertion.
Patentable inventions - grace periods
6 months grace period for abusive disclosure
disclosure of the invention during the 6 months preceding the filing/priority date at an academic or
technological meeting, organised by a competent department of the State Council of the People’s Republic of
China or by a Chinese academic or technological association provided that the applicant makes a declaration
concerning such making public and files within 2 months of filing the application a certificate issued by the
meeting stating the fact and date of the making public of the invention
disclosure of the invention during the 6 months preceding the filing/priority date at an international exhibition
recognized by the People’s Republic of China provided that the applicant makes a declaration concerning
such making public and files within 2 months of filing the application a certificate issued by the exhibition
stating the fact and date of the exhibition of the invention
New 6m grace period for disclosure under a national emergency or an extraordinary state of affairs
Patentable inventions - exclusion to patentability
Inventions contrary to the laws of the State / social morality; Inventions being detrimental to public interest;
Scientific discoveries; Rules and methods for mental activities; Computer programs as such; Methods for the
diagnosis or treatment of diseases; Plant varieties and animal breeds; Substances obtained by means of
nuclear transformation; Designs of two-dimensional printing goods, made of the pattern, the colour or the
combination of the two, which serve mainly as indicators
Process for Obtaining a National Patent - filing and fees
Fees/other: File at China National Intellectual Property Administration (CNIPA) at Beijing
Non-CN applicant/resident must have resident in country that grants full reciprocity to CN nationals.
Appointment of agent required.
The request for grant, description, claims and abstract must be filed in Chinese, in duplicate in paper or
electronic form
The filing fees, additional pages fees (additional fee for each page over 30), claims fees (additional fee due for
each claim over 10), priority claim fee and fee for publication of the application must be paid within 2 months
from the filing date or the application will be deemed withdrawn
Small entity reduction in fees available
Obligation to file first with national office: Yes – secrecy review by CNIPA required before filing abroad.
Secrecy review needs to be explicitly requested - simply filing the first application in China is not sufficient
Excess claim fees: Yes – for each claim over 10
Renewal Fees: due on grant
Process for Obtaining a National Patent - language
Chinese
Process for Obtaining a National Patent - search and exam
Search before grant: Yes
Type of examination: formal and substantive examination
Time limit to request exam: Examination must be requested within 3 years from priority date
Multiply dependent claims allowed: No
Prior Art Disclosure requirements: Upon request. If one or more corresponding applications were filed in
other countries, the CNIPA may require the applicant to file documents concerning any searches made for
examining the application and the results of any examination made in those countries
Examination Process: 4 months to respond to first office action. 2 months for subsequent office actions.
Can be extended by 2 months on payment of a fee.
On 31 July 2017, CNIPA announced its decision to prioritise the examination of patent applications in certain
areas like energy saving, environmental protection, new-generation information technology, high-end
equipment manufacturing and intelligent manufacturing. Also applies to re-examination and invalidation
proceedings.
In accordance with amendments to the Guidelines to Patent Examination which took effect on
1 November 2019, there is now an official mechanism by which examination of an invention
or design patent application may be delayed by 1, 2 or 3 years. The request for delayed
examination has to be filed together with the request for substantive examination in the case
of an invention patent application.
Since 1 Feb 2020, new process regarding divisional applications:
o For a first divisional application, the first filing (parent) must be under prosecution (pending). However,
for subsequent divisional applications (the filing of a new divisional from a previous divisional), the
requirements were looser as there was no explicit deadline.
o Now, the applicant cannot file any divisional or further divisional application after the original patent
application has been rejected, withdrawn or deemed as withdrawn or after expiry of a two-month
period following the issuance of a notification of grant on the original parent, unless an examiner
invites it with a notification to file a divisional application or with an office action raising a unity
objection. In such a case, the deadline for filing a further divisional application will be three months
from the date the applicant receives such an invitation to file a divisional application or an office action
on the parent case.
Process for Obtaining a National Patent - grant
If allowed, 2 months to pay issue fee and the annual fee for the year in which the patent is granted
Process for Obtaining a National Patent - claiming priority
Priority is to be claimed on filing the application, stating at least the date and country of the priority application.
A certified copy of the priority document or a Document Access Service (DAS) number must be filed with the
CNIPA within 3 months from filing the application in China
No restoration of priority available
National Phase Entry From a PCT Application - time limits and language
30 months. Actions required:
o The national application fee, publication fee and a translation in duplicate must be filed
On payment of a surcharge, can extend deadline by 2 months
Excess claims fees are also due on national phase entry. The fee is calculated based on the PCT claims (i.e.
you can’t avoid the fees by filing a reduced claim set)
Translation into Chinese required on entry (extendible by 2 months)
Utility models/ Other patents
Term: 10 years
What can be protected: Can be obtained for any “new technical solution relating to a product’s shape,
structure, or a combination thereof, which is fit for practical use”
Available from PCT: Yes. Can apply for the grant of a utility model in China instead of a patent under the
PCT.
Conversion to/from patent: No, but it possible to file both invention and utility model applications in parallel
to obtain early protection in China. The applications must be filed by the same applicant, on the same day.
They must relate to the same invention, and the fact that both applications were filed must be stated. Upon
notification of grant of the patent, the utility model must be abandoned.
Examination: preliminary examination only for formal requirement compliance, unity and whether obviously
un-patentable per se. No substantive examination. Requirement of inventiveness for utility models is less
severe than in the case of patents of invention. For a utility model it is sufficient that the invention has
substantive features and represents progress. If in conformity, applicant invited to pay issue fee within 2
months leading to grant of utility model. Invalidation may be requested at any time after advertisement of
grant. Patentee can request Office to prepare a search report.
Miscellaneous
Additional changes to the Guidelines for Patent Examination to take effect from 01 February 2020:
o Relaxed restriction on the subject of patents relating to stem cells
The previous practice of denying patents in respect of stem cell inventions involving the
industrial or commercial use of human embryos has been revised.
Patent protection will no longer be denied if an invention uses stem cells separated or
acquired from a human embryo that has not developed in a host and within 14 days of
fertilization.
o CNIPA will no longer issue paper patent certificates for patents with authorization notices dated March
3, 2020 or later. Instead, CNIPA will issue electronic certificates through their online system.
Patentees can still request paper certificates through the online system if needed though per
Announcement 349 of CNIPA
On October 17, 2020, the Standing Committee of the National People’s Congress in China promulgated the
fourth amended Patent Law of the People’s Republic of China, which came into force in its original form in
1985, with subsequent amendments in 1992, 2000, and 2008. The amendment came into effect on 1June
2021.
- The amendment for the first time codifies certain notable changes for pharmaceutical-related patents,
including the introduction of a patent linkage system in China to align with international practices.
- increases statutory damages, introduces punitive damages, and shifts the burden of proving damages in
patent infringement actions
- enables the China National Intellectual Property Administration to determine patent infringement disputes
of significant national impact
- expands the scope of protection over design patents (particularly on subject matter) and extends their
term of protection
- allows disclosure under a national emergency or an extraordinary state of affairs that is not noveltydestroying
(6 month grace period)
- allows patentees to file a declaration to implement open license
