Outline of the Chinese Patent System

Patent Law
Conventions
Patent Administration Agencies
Types of Patents
Rights of Patentee
Duration
Who MayApply
First-to-file Rule
What Is Not Patentable
What Are the Requirements for Grant of a Patent Right
Novelty
Disclosure without Losing Novelty
Priority
Inventiveness (Nonobviousness)
Practical Applicability
Filing Requirements for Patent
Filing Requirements for PCT National Phase in China
Procedures
Preliminary Examination
Amendment
Publication
Provisional Protection
Requesting Examination as to Substance
Duty to Disclose Prior Art
Allowance and Issuance of Patent
Reexamination (Appeal to the Patent Reexamination Board)
Invalidation of a Patent
Effect of Invalidation
Annuities
Compulsory License
Marking
Assignment
License
Termination of Patent
Scope of Protection
Noninfringement
Protection of Patent Right
Administrative Authority
Passing off
People's Court
Suspension
Preliminary Injunctions
Remedies
Criminal Liability


Patent Law

Patent Law of the People's Republic of China was adopted on March 12, 1984, effective on April 1, 1985. First Amendment was adopted on September 4, 1992, and effective on January 1, 1993. Second Amendment was adopted on August 25, 2000, and effective on July 1, 2001.

Implementing Regulations to the Patent Law entered into force on April 1, 1985, its first amendment effective on January 1, 1993, the second amendment effective on July 1, 2001, and the third amendment effective on February 1, 2003.

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Conventions

China became a member of Convention Establishing the World Intellectual Property Organization in 1980£¬the Paris Convention in 1985, Treaty on Intellectual Property in Respect of Integrated Circuits in1990, Patent Cooperation Treaty in 1994, Budapest Treaty in 1995, Locarno Agreement in 1996, Strasbourg Agreement in 1997, International Convention for the Protection of New Varieties of Plants (UPOV) in 1999, and WTO in 2001.

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Patent Administration Agencies

The State Intellectual Property Office of China is responsible for the patent administration throughout the country. It receives and examines patent applications and grants patent rights.

Patent Reexamination Board was set up under the State Intellectual Property Office and responsible for receiving and examining the requests for reexamination of patent application and declaring invalidation of patent.

The administrative authority for patent affairs under the people's governments of provinces, autonomous regions, municipalities and other cities approved by Government are responsible for the administrative work concerning patents in their respective administrative areas.

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Types of Patents

There are three types of patents: Patent for Invention, Patent for Utility Model, and Patent for Design.

Invention means any new technical solution relating to a product, a process or improvement thereof.

Utility model means any new technical solution relating to the shape, the structure, or their combination, of a product, which is fit for practical use.

Design means any new design of the shape, the pattern or their combination, or the combination of the color with shape or pattern of a product, which creates an aesthetic feeling and is fit for industrial application.

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Rights of Patentee

The patentee has the right to prevent others from making, using, offering to sell, selling or importing the patented product, or using the patented process, and using, offering to sell, selling or importing the product directly obtained by the patented process, for production or business purposes, without his permission, except where otherwise provided for in the Chinese Patent Law.

The patentee has the right to prevent any other person from making, selling or importing the product incorporating its or his patented design, for production or business purposes, without his permission.

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Duration

The duration of patent right for inventions is twenty years, the duration of patent right for utility models and patent right for designs is ten years, counted from the date of filing.

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Who May Apply

An entity may apply for a patent for invention, utility model or design created by its employee(s) in execution of the tasks of the entity or mainly by using the material and technical means of the entity, which is called service invention-creation. The inventor is entitled to be named in the patent application.

For a non-service invention-creation, the inventor or creator may apply for a patent.

Nonresident citizens of foreign countries and foreign enterprises may apply on the basis of reciprocity, a bilateral treaty between China and the applicant's country, or an international treaty to which both countries adhere.

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First-to-file rule

Where two or more applicants file applications for patent for the identical invention-creation, the patent right is granted to the applicant whose application was filed first.

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What Is Not Patentable:

No patent right shall be granted for the following matters:

• any invention that is contrary to the laws of the State or social morality, or that is detrimental to public interest;
  
• scientific discoveries;
  
• rules and methods for mental activities;
  
• methods for the diagnosis or treatment of diseases;
  
• animal and plant varieties; and
  
• substances obtained by nuclear transformation.
  

What Are the Requirements for Grant of a Patent Right

Any invention or utility model for which patent right may be granted must possess novelty, inventiveness, and practical applicability.

Any design for which patent right may be granted must not be identical with and simi1ar to any design which, before the date of filing, has been publicly disclosed in publications in China or abroad or has been publicly used in China, and must not be in conflict with any prior right of any other person.

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Novelty

An invention or utility model possesses novelty if, before the date of filing,
-- no identical invention or utility model has been publicly disclosed in publications in China or abroad or has been publicly used or made known to the public by any other means in China,
-- nor has any other person filed previously with the State Intellectual Property Office an application which described the identical invention or utility mode1 and was published after the said date of filing.

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Disclosure without Losing Novelty

An invention for which a patent for invention or utility model is applied for does not lose its novelty where, within six months before the date of filing, the invention was
--- first exhibited at an international exhibition sponsored or recognized by the Chinese Government,
--- first disclosed at an academic or technological meeting organized by a competent department concerned of the State Council or by a national academic or technological association, or
--- disclosed without the consent of the applicant.

The applicant(s) must make a declaration of exhibition or disclosure when filing the patent application, and submit a certificate issued by the exhibitor or the organizer of the meeting, stating the fact that the invention was displayed or disclosed and the date of its exhibition or disclosure within two months from the filing date.

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Priority

Any applicant may enjoy a right of priority for its or his filing a Chinese application for a patent for invention or utility model within twelve months, or for a patent for design within six months from its or his first filing under International Convention, or in a country with which China has an agreement, or on the basis of reciprocity.

Any applicant may enjoy a right of priority for its or his filing a Chinese application for a patent for invention or utility model within twelve months from its or his first filing a patent application in China.

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Inventiveness (Nonobviousness)

An invention possesses inventiveness if, as compared with the technology existing before the date of filing, the invention has prominent substantive features and represents a notable progress; and a utility model possesses inventiveness if it has substantive features and represents progress.

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Practical Applicability

An invention or utility possesses practical applicability if the invention or utility model can be made or used in industry and can produce effective results.

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Filing Requirements for Patent

1. Name, address and nationality of applicant(s).
2. Name of inventor(s).
3. Type of the application, i.e., a patent for invention, for utility model or for design
4. Information on priority claimed: the filing date, filing number and the country in which the application was filed (if applicable)
5. Specification or Drawings:

• Patent application for invention or utility model:
  Description, claims, abstract and drawings (if any, two sets of formal drawings)
  
• Patent application for design:
  

Procedures

Patent applications for invention are subject to a preliminary examination followed by a publication promptly after the expiration of 18 months from the filing date, or earlier at applicant's request. The substantive examination proceeds upon the request of the applicant(s) made within three years from the filing date. The patent right is granted if no cause is found for rejecting the application.

Patent application for utility model or design is subject to a preliminary examination. Patent for utility model or design is granted if no cause is found for rejecting the application.

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Preliminary Examination

A preliminary examination focuses on whether the formality of a patent application is in conformity with the provisions of the Patent Law or Implementing Regulations to the Patent Law.

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Amendment

An applicant may amend his application for patent for invention on its or his own initiative when requesting examination as to substance, or within the time limit of three months after the receipt of the notification for entry into substantive examination procedure.

An applicant may amend his application for a patent for utility model or design on its or his own initiative within two months from the date of filing.

Where the applicant amends the application after receiving the Office Actions of the examiner, he or it shall make the amendment as required by the examiner.

Any amendment to an application for a patent for invention or utility model may not go beyond the scope of the disclosure contained in the initial description and claims, for design not go beyond the scope of the disclosure as shown in the initial drawings or photographs.

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Publication

Promptly after the expiration of 18 months from the priority date, an application for a patent for invention (including the abstract of the specification) is published in the Patent Gazette.

When the Patent Office decides to grant the patent, the applicant will be invited to pay the fees. Upon payment, a certificate will be issued, the patent will be registered and published in the Patent Gazette.

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Provisional Protection

After the publication of the application for a patent for invention, the applicant may require the entity or individual exploiting the invention to pay an appropriate fee, although it or he cannot initiate an infringement action before the grant of patent.

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Requesting Examination as to Substance

An applicant for a patent for invention shall request examination as to substance within three years from the date of filing (priority date if applicable). If, without any justified reason, the applicant fails to meet the time limit for requesting substantive examination, the application will be deemed to have been withdrawn.

The State Intellectual Property Office may, on its own initiative, proceed to examine any application for a patent for invention as to its substance when it deems it necessary.

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Duty to Disclose Prior Art

An applicant for a patent for invention has duty to furnish pre-filing date reference materials concerning the invention, when requesting examination as to substance.

If the applicant has already filed an application for a patent for invention in a foreign country, he or it shall furnish within a specified time limit search reports or the results of any examination made in that country upon request by the State Intellectual Property Office.

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Allowance and Issuance of Patent

If upon examination it is found that there is no cause for rejection of the application for a patent, the State Intellectual Property Office will issue a notice of allowance, calling for the payment of the issue fee within two months from the date of receiving the allowance. The patent will be issued, registered and announced after the State Intellectual Property Office receives the payment. The patent right for invention will take effect as of the date of the announcement.

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Reexamination (Appeal to the Patent Reexamination Board)

If an applicant for patent is not satisfied with the decision of the examiner of the State Intellectual Property Office rejecting the application, the applicant may, within three months from the date of receipt of the notification, request the Patent Reexamination Board to make a reexamination.

If the applicant files a request for reexamination, an appeal brief must be filed with the request. After the appeal brief has been filed, the Board will remit the request with the brief to the examiner for examination. Where the examiner revokes his former decision, the Board will make a decision accordingly. Otherwise, the collegial panel of the Board will proceed the examination collegially.

The applicant may amend its or his application at the time when filing the request or making responses to the notification of reexamination of the Board. The amendments, however, shall be limited only to remove the defects pointed out in the examiner's decision, or in the notification of reexamination.

If the applicant is not satisfied with the decision of the Board, it or he may, within three months from the date of receipt of the notification, institute legal proceedings in the people's court.

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Invalidation of a Patent

Any entity or individual may request the Patent Reexamination Board to declare the patent right invalid, if it or he considers that the grant of the patent right is not in conformity with the relevant provisions of the Patent Law.
A request for invalidation must be filed with an appeal brief. After the invalidation request is accepted by the Board, the person making the request is given one month to add reasons or supplement evidence. Additional reasons or evidence which are submitted after this one-month time limit may be disregarded by the Board.
The person making the invalidation request and the patentee may request an oral hearing. When an appeal is set for oral hearing, two parties are given notice of the date and place of the hearing. The parties shall make response to the notice within the specified time limit. Where the person requesting invalidation fails to make response to the notice of the hearing within the specified time limit, and fails to take part in the hearing, the request for invalidation shall be deemed to have been withdrawn. Where the patentee fails to take part in the hearing, the Board may proceed to examine by default.

Any amendment on the claims made in the course of the examination may not broaden the scope of patent protection. No amendment is allowed to make on description or drawings for invention or utility model patent.
No amendment is allowed to make on drawings, photographs or the brief explanation of the design.

If the patentee or the person making the request for invalidation is not satisfied with the decision of the Board declaring the patent right invalid or upholding the patent right, such party may, within three months from receipt of the notification of the decision, institute legal proceedings in the people's court.

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Effect of Invalidation

Any patent right that has been declared invalid is deemed to be nonexistent from the beginning.

A decision of invalidation has no retroactive effect on any judgment or order on patent infringement which has been pronounced and enforced by the people's court, on any decision concerning the handling of a dispute over patent infringement which has been complied with or compulsorily executed, or on any contract of patent license or of assignment of patent right which has been performed prior to the declaration of the patent right invalid.

The damage, however, caused to other persons in bad faith on the part of the patentee must be compensated by the patentee. And if the patentee or the assignor makes no repayment to the licensee or the assignee of the fee for the exploitation of the patent or of the price for the assignment of the patent right, which is obviously contrary to the principle of equity, the patentee or the assignor shall repay the whole or part of the fee to the licensee or the assignee.

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Annuities

Annual fees shall be paid in advance within the month before the expiration of the preceding year. Six months' grace is set for late payment of annuities with fine.

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Compulsory License

The State Intellectual Property Office may grant a nonexclusive compulsory license to exploit a patent for invention or utility model where a national emergency or any extraordinary state of affairs occurs, or if the public interest so requires;

The State Intellectual Property Office may grant a nonexclusive compulsory license upon the request of an entity, where the entity has made requests for authorization from the patentee of an invention or utility model to exploit its or his patent on reasonable terms and conditions, such efforts have not been successful within at least three years form the grant of the patent, and the entity is qualified to exploit the invention or utility model.
Where the entity or individual granted a compulsory license and the patentee fail to reach an agreement on the amount of the exploitation fee, the State Intellectual Property Office may adjudicate.

If a patentee is not satisfied with the decision of the State Intellectual Property Office granting a compulsory license, or a patentee or compulsory licensee is not satisfied with an adjudication regarding the exploitation fee payable for exploitation, he may, within three months of receipt of notification, institute legal proceedings in the People's Court.

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Marking

Marking the product or its packaging to indicate the patent protection, together with the patent number, is optional.

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Assignment

If the right to apply for a patent or the patent right is assigned, the parties shall conclude a written contract and register it with the State Intellectual Property Office. The registration will be announced. The assignment shall take effect as of the date of registration.

Any assignment, by a Chinese entity or individual, of the right to apply for a patent, or of the patent right, to a foreigner must be approved by the competent department for foreign trade and economic affairs of the State Council in conjunction with the science and technology administration department of the State Council.

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License

Any entity or individua1 exploiting the patent of another shall conclude with the patentee a written license contract for exploitation and pay the patentee a fee for the exploitation of the patent. The license contract shall be submitted to the State Intellectual Property Office for the recordation within three months from the date of entry into force of the contract.

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Termination of Patent

The patent right shall cease before the expiration of its duration, if an annual fee is not paid as prescribed, or if the patentee abandons his or its patent right by a written declaration.

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Scope of Protection

The scope of protection of the patent right for design is determined by the product incorporating the patented design as shown in the drawings or photographs.

The scope of protection of the patent right for invention or utility model is determined by the terms of the claims. The description and the appended drawings may be used to interpret the claims. The scope determined by the terms of the claims is the scope defined by explicitly stated essential technical features in the claims, as well as the scope defined by the features equivalent to the essential technical features (hereinafter referred to as "equivalent features").

An equivalent feature is a technical feature which performs substantially the same function in substantially the same way to accomplish substantially the same result as the stated technical features, and which can be conceived by an ordinary person skilled in the art without creative work.

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Noninfringement

None of the following is deemed an infringement of the patent right:
(l) Where, after the sale of a patented product that was made or imported by the patentee or with the authorization of the patentee, or of a product that was directly obtained by using the patented process, any other person uses, offers to sell or sells that product;
(2) Where, before the date of filing of the application for patent, any person who has already made the identical product, used the identical process, or made necessary preparations for its making or using, continues to make or use it within the original scope only;
(3) Where any foreign means of transport which temporarily passes through the territory, territorial waters or territorial airspace of China uses the patent concerned, in accordance with any agreement concluded between the country to which the foreign means of transport belongs and China, or in accordance with any international treaty to which both countries are party, or on the basis of the principle of reciprocity, for its own needs, in its devices and installations;
(4) Where any person uses the patent concerned solely for the purposes of scientific research and experimentation.

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Protection of Patent Right

A patentee may bring an action against an infringer either in the administrative authority for patent affairs or in people's court.

It is the duty of the plaintiff to provide evidence in support of his allegations.

Where any infringement dispute relates to a patent for invention for a process for the manufacture of a new product, any entity or individual manufacturing the identical product shall furnish proof to show that the process used in the manufacture of its or his product is different from the patented process.

Where the infringement relates to a patent for utility model, the people's court or the administrative authority for patent affairs may ask the patentee to furnish a search report made by the State Intellectual Property Office.

Any person who, for production and business purposes, uses or sells a patented product or a product that was directly obtained by using a patented process, without knowing that it was made and sold without the authorization of the patentee, shall not be liable to compensate for the damage of the patentee if he can prove that he obtains the product from a legitimate source.

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Administrative Authority

The administrative authority of the place where the requested party has his domicile or the infringement is committed has jurisdiction to preside over an action against an infringer or mediation of a dispute.

The administrative authority for patent affairs may order the cessation of infringing acts. The alleged infringer may, within 15 days from the date of receipt of the notification of such order, institute proceedings in people's Court in accordance with the Administrative Procedure Law. If such proceedings are not begun, and the order is not complied with, the administrative authority for patent affairs may institute proceedings for compulsory execution of the order.

The administrative authority for patent affairs may, upon the request of the parties, mediate in the amount of compensation for the damage caused by the infringement of the patent right. If the mediation fails, the parties may institute legal proceedings in the people's court in accordance with the Civil Procedure Law of the People's Republic of China.

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Passing off

If any person passes off any non-patented product or process as patented, such person shall be ordered by the administrative authority for patent affairs to cease the passing-off, correct it publicly, and pay a fine of no more than RMB 50000.

If any person passes off the patent of another person as his own, such person shall, in addition to bearing his civil liability, be ordered by the administrative authority for patent affairs to cease the passing-off, correct it publicly, confiscated his illegal earnings and, in addition, may be imposed a fine of no more than RMB 50000.

Where the infringement constitutes a crime, he will be prosecuted for his criminal liability.

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People's Court

A lawsuit brought on a patent infringement shall be under the jurisdiction of the people's court of the place where the defendant has his domicile or the infringement is committed.

The intermediate people's courts have subject matte jurisdiction as courts of first instance over cases arising under the patent law.

The statute of limitations for bringing an infringement action is two years from the date on which the patentee or any interested party obtains or should have obtained knowledge of the infringing act
.
If the plaintiff or defendant is not satisfied with the judgment of first instance court, he may appeal to the court at higher level, the court of second instance, within 15 days (or 30 days if the party has no domicile in China) after the date on which the written judgment was served. The judgment that has not been appealed against within such time limit, is legally effective.

The judgment and the written order of the second instance court are final and legally effective.

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Suspension

The court shall suspend the legal proceedings for cases of alleged infringement of patent for utility model or design, if the defendant files a request to the Patent Reexamination Board to declare the patent right invalid within 15 days counted from the date on which a copy of the complaint is served, or 30 days if the defendant has no domicile in China, and may, however, not suspend under the following circumstances:

(1) the search report provided by the plaintiff shows that there is no prior art document destroying novelty or inventiveness of the paten for utility model;
(2) the evidence provided by the defendant is sufficient to prove that the technology used is publicly known; or
(3) the evidence and the reasons provided by the defendant to file the request to declare the patent invalid is obviously insufficient.

The court may not suspend the legal proceedings for cases of alleged infringement of patent for invention and cases for utility model or design on which the Patent Reexamination Board upheld the patent rights, even if the defendant files a request to the Patent Reexamination Board to declare the patent right invalid within the prescribed time limit.

Where the court decides to suspend the legal proceedings, the court may issue an injunction or take other measures to prevent further damages to the interests of the patentee, if the plaintiff submits such request and provides appropriate deposits.

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Preliminary Injunctions

Where any patentee or interested party has evidence to prove that another person is infringing or will soon infringe its or his patent right and that if such infringing act is not checked or prevented from occurring in time, it is likely to cause irreparable harm to it or him, it or he may, before any legal proceedings are instituted, request the people's court to adopt measures for ordering the suspension of relevant acts and the preservation of property.

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Remedies

Remedies available to the patentee whose patent has been infringed include injunction and damages.

The amount of compensation for the damage is assessed on the basis of the losses suffered by the patentee or the profits which the infringer has earned through the infringement. If it is difficult to determine the losses which the patentee has suffered or the profits which the infringer has earned, the amount may be assessed by reference to the appropriate multiple of the amount of the exploitation fee of that patent under contractual license.

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Criminal liability

A person counterfeiting the patent of another may, if the circumstances are serious, be sentenced to fixed-term imprisonment of not more than three years or criminal detention and/or be fined.

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Articles/Papers

　Outline of the Chinese Patent System
　Outline of the Chinese Trademark Law
　

Links

　State Intellectual Property Office
　Trademark Office of State Administration for Industry & 　Commerce
　State Copyright Office
　State Administration for Industry & Commerce
　Ministry of foreign Affairs
　Ministry of Justice
　Ministry of Commerce
　Customs General Administration