China’s SIPO Issues FAQs Relating to Patent Law: Part I

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Aug. 16 – With the view to facilitate a better understanding of the country’s Patent Law, China’s State Intellectual Property Office (SIPO) has issued a set of frequently asked questions regarding the types, duration and application of patents in the country. The answers provided are based on existing regulations. Detailed information can be found below.

Q: Why do I need a China patent?

A: If your invention has Chinese market potential and you think that other companies could make profits from your invention, you need a patent to protect your invention.

In China, a patent gives individuals the right to exclude others from making their products. Also, it gives individuals the right to initiate legal action against anyone who is making or selling their inventions without permission.

In addition, individuals can make money by licensing or selling their inventions to someone else.

Q: How many types of industrial property rights exist in China?

A: There are three kinds of industrial property rights in China, including:

  • Patents;
  • Trademarks; and
  • Copyrights.

More specifically, patents are composed of:

  • Patents for inventions;
  • Patents for utility models; and
  • Patents for designs.

Q: What are the differences between the three types of patents?

A: China’s Patent Law has defined “inventions” “utility models” and “designs” as follows:

  • Invention refers to any new technical solution relating to a product, a process or the improvement thereof;
  • Utility model refers to any new technical solution relating to the shape, the structure, or their combination, of a product, which is fit for practical use; and
  • Design refers to 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.

Q: What is the duration of a Chinese patent?

A: The duration of patents for inventions in China is 20 years, while the duration of patents for utility models and designs is 10 years.

Q: What language shall be used for a patent application in China?

A: Any document submitted under the Chinese Patent Law and its implementing rules must be in Chinese.

Q: What kinds of inventions cannot be patented in China?

A: According to China’s Patent Law, the following items cannot be patented in the country:

  • Scientific discoveries;
  • Rules and methods for mental activities;
  • Methods for the diagnosis or for the treatment of diseases;
  • Animal and plant varieties;
  • Substances obtained by means of nuclear transformation; and
  • Designs that are mainly used for marking the pattern, color or combination of both pattern and color.

Q: What documents are needed for patent applications in China?

A: China’s Patent Law has laid down the documents for a patent application as follows:

  • For the application for a patent of invention or utility model, a request, a description, an abstract and a written claim shall be submitted; and
  • For the application for a patent for design, a request, a drawing or picture of the design and a brief description of the design shall be submitted.

Q: What are the conditions for granting patent rights?

A: Any invention or utility model for which patent right may be granted must possess the following three characters:

  • Novelty
  • Inventiveness
  • Practical applicability

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

Q: What applicants can do if their patent applications have been rejected?

A: Where an applicant has different ideas with the decision rendered by the Patent Administration Department under the State Council, the applicant may, within three months from the date of receipt of the notification, request the Patent Reexamination Board to make a re-examination. The Patent Reexamination Board shall, after re-examination, make a decision and notify the applicant.

However, if the applicant is not satisfied with the decision rendered by the Patent Reexamination Board, the applicant may, within three months from the date of receipt of the notification, institute legal proceedings in the people’s court.

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4 thoughts on “China’s SIPO Issues FAQs Relating to Patent Law: Part I

    Michiel says:

    Additional questions:
    * How long does the patent application procedure(s) usually take?
    * During this period (is called “patent pending”?), is there any form of protection?
    * What are the costs for patent application(s)?
    * What is the risk of subversion of the process during the application (e.g. SIPO clerk helps friend to claim ownership of your IP)? I.e. how safe is it (e.g. compares to practices as trademark squatting or web-site squatting, is there something like patent-squatting?)
    * Who can apply for patent(s)? Can the IP inventor/owner do this personally, or is a lawyer required by law (just like a company cannot do their own taxes, requires to retain a CPA).
    * Are there (dependable) mechanisms for sale (or licensing) of patents? Is this common like in some other countries?
    * Does the system (in reality) work for “small” patent owners or only big-pocket companies?

    @Michiel:
    * How long does the patent application procedure(s) usually take?
    Typically about two-three years, however it can be longer.
    * During this period (is called “patent pending”?), is there any form of protection?
    You have the right to sue for infringement damages to any party that copies the patent backdated to the date of the original application.
    * What are the costs for patent application(s)?
    This depends upon the type of patent and the complexity.
    * What is the risk of subversion of the process during the application (e.g. SIPO clerk helps friend to claim ownership of your IP)? I.e. how safe is it (e.g. compares to practices as trademark squatting or web-site squatting, is there something like patent-squatting?)
    You should hire a patent lawyer to deal with this for maximum protection.
    * Who can apply for patent(s)? Can the IP inventor/owner do this personally, or is a lawyer required by law (just like a company cannot do their own taxes, requires to retain a CPA).
    Anyone can file a patent however the administration procedures can be complex as can aspects of patent law, it is advisable to hire a patent lawyer to act for you.
    * Are there (dependable) mechanisms for sale (or licensing) of patents? Is this common like in some other countries?
    You can license your patent and this is common.
    * Does the system (in reality) work for “small” patent owners or only big-pocket companies?
    The patent application system does not discriminate upon the size of the company.

    You can read more in our popular China Briefing Guide to Intellectual Property Rights in China (second edition) here: http://www.asiabriefing.com/store/book/intellectual-property-rights-in-china-second-edition-241

    Best wishes
    Chris

    Svanbjörn Albertsson says:

    @Chris

    Thanks a lot for the great info.

    I have been reading about how patents are registered as we are seeing China as a relevant market for our business. I did not think that the registration could 3 years. Does that mean that we are left to the mercy of trolls while waiting for our marks to be registered?

    -Svan

    @Svan: You do have some protection when you register and before the patent is granted. But not to the extent that you can immediately sue for damages. If someone copies your patent pending you can issue a cease and desist letter – and if continued, damages can be awarded backdated to that letter – but only when the patent is granted in full. So to be blunt – yes there is a loophole and yes it can be exploited by nefarious companies out there – although it is still relatively uncommon it does happen.
    Best wishes
    Chris

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