Patent Law of the People's Republic of China (amended in 2008)

Implementing Regulations of the Patent Law of the People's Republic of China (amended in 2002)

Paris Convention on the Protection of Industrial Property

Patent Cooperation Treaty

 

 

Chinese patent includes the invention, utility model and design.

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

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

Design: 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.

 

 

1. Do necessary search: before filing an application for a patent, the applicant shall do necessary search to ensure the novelty and inventiveness of the patent application.

2. Determine the category of the patent application: the applicant shall determine the category of the patent application according to the subject matter which is in need of protection.

3. Entrust an agent: instruct an agency to prosecute the patent application by the agency contract, the email, the fax and etc.

4. Necessary documents which the client shall provide:

(1) Letter of Instruction stating:

◇ Category of the patent application (the invention, the utility model or the design);

◇ Name and address of the applicant (the applicant may be a natural person, an enterprise or other corporate body);

◇ Name of the inventor (the inventor must be a natural person);

◇ Any other requirements of the applicant concerning the application, such as whether it enjoys right of priority and etc.

(2) Power of Attorney: the applicant shall sign (if he is an individual) or seal (if it is an entity) at the place of the client.

(3) Where an application for a patent for invention or utility model is filed, the technical disclosure shall be submitted, which shall include:

◇ Title of the invention (or the utility model – the same for the following)

The title shall briefly reflect the technical content of the invention and be consistent in documents of all kinds and thereafter once determined.

◇ Technical field

It shall simply state the technical field to which the invention pertains, for example: the present invention is a kind of electric tools or the present invention relates to a method for separating liquid mixtures and etc.

◇ Background art

Generally, it shall be based on the search documents, describe the closest prior art objectively and point out the problems and defects existing in the prior art.

◇ Purpose of invention

It shall point out the purpose of invention or the technical problem to be solved by the invention.

◇ Technical solution

It is the core of a patent application and the collection of technical measures taken by the applicant to deal with the technical problem to be solved, and shall be described abstractly, clearly, completely and correctly.  For a process, generally, every step of the process shall be described abstractly according to the order of flow, and the parameter range shall also be described if there are parameters.  If it relates to the shape or the structure of a product, then the absolutely necessary (the most basic) parts included in the product, the places of the parts and the connections between the parts shall be described in natural language.

If it relates to an improvement to the prior method or product, then the part of the improvement shall be described.

If it relates to a circuit, then all the function blocks of the circuit diagram and the electric connections between the blocks shall be illustrated.

◇ Effect of the invention

It shall correspond to the purpose of the invention and the technical solution.  The effect the invention can achieve shall be described, best to use the specific data if there is any.

◇ Figures and brief descriptions thereof

Provide necessary figures of the invention and state the title of each figure, such as structure view of device, flow chart and etc.  All parts in the figures shall be indicated by lines and numbered with Arabic numerals coherently.  Characters shall not appear in the figures.  The name of the part represented by every number shall be indicated.

◇ Mode of carrying out the invention

The mode of carrying out the technical solution of the invention shall be illustrated in combination with the figures and the embodiments in such detail as to enable a person skilled in the art to carry out the invention.  This part is a detailed description and corresponds to Part 5 which is an abstract description.

If it relates to a circuit, then the circuit part also corresponds to the function blocks of circuit diagram in Part 5, presents a detailed circuit diagram and illustrates the structure of circuit diagram, the direction of circuit and etc in natural language.

The said contents shall use technical terms and exclude jargons or common sayings.

 

 

In accordance with the provisions of Article 20 of the Patent Law of the PRC, Where any Chinese entity or individual intends to file an application in a foreign country for a patent for invention-creation made in China, it or he shall file first an application for patent with the Patent Office under the State Council and appoint a patent agency (or foreign-related agency) designated by the government to act as its or his agent.

 

The applicant can enjoy right of priority based on his first Chinese patent application, if he files in a foreign country an application for a patent within the prescribed priority period.  After the prescribed priority period, the applicant may also file in a foreign country an application for a patent if the first Chinese patent application has not been disclosed yet but no longer enjoys right of priority.  The prescribed priority period for the invention or the utility model is 12 months, the design 6 months.

 

1. Channels of application

A foreign patent application can be filed through the Paris Convention or PCT channel.

◇ Channel of Paris Convention

In 1883, the Paris Convention for the Protection of Industrial Property was concluded in Paris of France.  China joined the Paris Convention on March 19, 1985.  There are over 150 state members up to now.  Major contents of the Paris Convention are (1) principle of national treatment: nationals of any state member of the Paris Convention shall, as regards the protection of industrial property, enjoy in all the other state members of the Paris Convention the rights that may grant to nationals; (2) principle of priority: a specific applicant who has filed an application for an industrial property in one of the state members may apply for protection in the other state members within the prescribed period (6 months or 12 months), and the subsequent application shall be deemed to have been filed at the same date as the first filed application, i.e., the application enjoys a right of priority, compared with the same invention-creation of other person (from the first application to the subsequent application); (3) principle of independent patent: patents in one country shall be independent of patents obtained for the same invention in other countries, according to which, the applicant who intends to obtain a patent in one country must apply with the patent office of the country for approval thereof.

 

Advantages of the Paris Convention channel:

(1) Quick and convenient: a patent may be granted in some countries quickly, and can be further used for the purposes of license, assignment and so on.

(2) Grant of a patent in some countries can be used as powerful grounds to persuade examiners of other countries to make a decision of granting a patent, for example, the German patent, EU patent and etc can be used for such purpose.

(3) If the application is only filed in one to two counties, then the cost is lower.

 

◇  PCT Channel

PCT was concluded on June 19, 1970 and came into force on January 24, 1978 for the purpose of simplifying formalities and procedures of international patent application, facilitating transmission and utilization of technical information, strengthening legal protection of invention-creation, promoting scientific, technical and economic development of states parties and adapting to globalization trend of patent systems.  China formally filed an application with the WIPO on September 13, 1993 which became effective automatically three months later and joined the treaty as the receiving office, the international searching and preliminary examining authority.  Up to January 2003, the state members of the treaty included 88 countries and 4 regions.  This is a channel for application (no grant of patent).  The international application filed according to PCT not only can seek protection of the invention but also can enjoy right of priority in any of the states members.  The international application has the same legal effect as the national and regional patent application.  An international application can equal to applications in all countries and regions in which protection is in need.  PCT essentially unifies the international patent application filing, but it has not yet unified the grant of patent and the issue of international patent.

 

The Chinese citizens or enterprises may file international patent applications with the State Intellectual Property Office or the International Bureau.

 

The applicant may file an international patent application directly.  He may also file a Chinese patent application first and an international patent application later, with right of priority based on the first one.  The prescribed period of international phase in most countries is 30 months.  The applicant may enter the national phase upon the expiry of that period or in advance.

 

Advantages of PCT channel:

(1) Unified application: the international application may be filed in one place (China), one language, one style and one copy and with the payment made in one currency, which renders in other state members or regional patent organizations the same effect as the national or regional patent.

(2) Obtain right of priority most quickly: the filing of international patent application may be done nearby (the Chinese Patent Office), and moreover, the PCT application may be filed in the language of one's own country.  Therefore the applicant may file the application at the last moment of the priority period and enjoy right of priority by filing the international application easily.

(3) The applicant may obtain a copy of the international search report around 9 months after the filing date or 16 months after the priority date; the applicant may also obtain a copy of preliminary examination report within 28 months from the filing date or the priority date (if the applicant files a demand for international preliminary examination within the prescribed period).  The applicant may determine, based on the prior art in the foresaid two reports, whether he should enter the national phase.  The PCT application may defer the entry into national phase for 8 to 18 months, which is definitely valuable to the applicant who has not been prepared.

 

Disadvantages of PCT channel:

The filing of international application is divided into international and national phases.  The international phase mainly deals with receiving, publication, searching and preliminary examination matters, but the searching and preliminary examination are just to provide reference for examination in the national phase and for the applicant and do not enjoy effect of course.  The national phase mainly deals with grant of patent in the country or region.  Therefore the formalities of international application are relatively complicated and the charge of fees is divided into two phases, which may add burdens to the applicant with specific economic interest.  Moreover, the international application can not be chosen for protection of a patent of design.

 

2. Documents to be provided

(1) Paris Convention channel

(a) Letter of Instruction stating the following contents

◇ Name and address of the applicant (in Chinese and English);

◇ Name and address of the inventor (in Chinese and English);

◇ Category of patent to be applied for;

◇ Designated countries

◇ Whether a priority is claimed, if so, the filing date and application number of the first application;

◇ Whether a demand for substantive examination is filed and etc at the same time of the application

(b) The Request, the Notification of Acceptance, the Description, the Claims, the Drawings and the Abstract of the first Chinese patent application.

(c) Power of Attorney.

 

(2) International phase of PCT

(a) Letter of Instruction stating the following contents

◇ Name and address of the applicant (in Chinese and English);

◇ Name and address of the inventor (in Chinese and English);

◇ Whether a priority is claimed, if so, the filing date and application number of the first application;

◇ Whether a demand for international preliminary patent examination is filed and etc.

(b) If a Chinese patent application has been filed, please provide all the application documents; if no Chinese patent application has been filed, please provide technical disclosure according to the requirements of a Chinese patent application.