Features of Patenting Inventions and Utility Models in China for Russian Inventors

Currently, more and more Russian applicants are interested in obtaining patents for their technical solutions in China. However, there are a number of features that Russian individuals and legal entities need to take into account when filing applications for inventions and utility models in China, and which we will talk about in detail in this article.

How can a Russian applicant file an application for an invention or utility model in China?

First of all, Russian applicants should note that, in accordance with Clause 1 of Article 1395 of the Civil Code of the Russian Federation "Patenting of Inventions or Utility Models in Foreign States and International Organizations", an application for a patent for an invention or utility model created in the Russian Federation may be filed in a foreign state or with an international organization upon the expiry of 6 months from the date of filing the relevant application with the federal authority Executive Authority for Intellectual Property, if the applicant is not notified within the specified period that the application contains information constituting a state secret. At the same time, an application for conventional priority may be filed with a foreign state or an international organization no later than 12 months from the priority date.

Violation of the above established procedure for patenting industrial property objects in foreign states in accordance with Article 7.28. of the Code of Administrative Offenses entails the imposition of an administrative fine on citizens in the amount of one thousand to two thousand rubles; on legal entities - from fifty thousand to eighty thousand rubles.

Thus, in order to comply with the established procedure for patenting industrial property objects in foreign countries, Russian applicants have several options for filing applications and obtaining patents in China:

1. file an application for an invention/utility model with Rospatent and then, after 6 months, but no later than 12 months, file an application with priority on the initial application filed in the Russian Federation;
2. file an application for an invention/utility model with Rospatent and then, after 6 months, but no later than 12 months, file a PCT international application with priority on the initial application filed in the Russian Federation, after the publication of the PCT international application, before the expiration of 30 months from the priority date, transfer it to the national phase in China;
3. immediately file the PCT international application through Rospatent as the receiving Office and, after the publication of the PCT international application, transfer it to the national phase in China before the expiration of 30 months from the date of filing of the PCT international application.

The choice of a specific option from the above depends on the goals and capabilities of the applicant. At the same time, as a rule, patent attorneys advise applicants interested in obtaining a patent for an invention/utility model in foreign countries to choose the second option, for the following reasons:

• filing the initial application with the Russian Patent Office allows the applicant, in case of filing an application independently or with the assistance of patent attorneys, to control the process of patenting his solution, since all paperwork on the application is conducted in Russian;
• filing a PCT international application with priority on the Russian application allows you to speed up the processing of the PCT international application, since Rospatent is the receiving Office in the PCT system, and during the international phase, part of the procedures remains in the Russian jurisdiction;
• filing a PCT international application also saves the applicant time and money, since the applicant has 30/31 months from the date of filing the initial application to make an informed decision on the prospects for further patenting in China or other countries of interest to the applicant, to prepare all the necessary materials, as well as to perform all the procedures provided for by the laws of China or other countries.

For more information on filing a PCT international application by Russian applicants, please see this article.

What should a Russian applicant take into account when filing an application for an invention or utility model in China?

First of all, it should be noted that such objects as scientific discoveries, rules and methods of intellectual activity, methods of diagnosing or treating diseases, varieties of animals or plants do not belong to patenting in China.

An application for an invention or utility model must be submitted to the Office in Chinese and include a description, claims, abstract, necessary drawings (for the registration of a utility model, the provision of drawings is a prerequisite), and indications of the grounds for claiming priority (if any).

At the same time, unlike filing an application with the Russian Patent Office, where a foreign applicant has the right to submit application materials in English and send a translation after filing the application, in China it is not possible to extend the deadline for submitting a translation of the application into Chinese (after filing the application), the translation must be filed simultaneously with the application for a patent.

The procedure for patenting inventions consists of two stages – preliminary (formal) examination and substantive examination of the application (similar to the procedure for patenting inventions in the Russian Federation). At the same time, applications for utility models undergo only preliminary (formal) examination.

At the stage of preliminary examination, the application is checked for compliance with formal requirements, such as payment of application fees, priority determination, correctness of filling out the application, completeness of documents, availability of translation of application materials, power of attorney from the applicant to the representative.

At the stage of substantive examination of the application, the claimed invention or group of inventions is checked for compliance with the patentability criteria: novelty, inventive step and industrial applicability (similar to the procedure for patenting inventions in the Russian Federation), as well as the requirements for patent application documents.

The entire process of paperwork in China for applications for utility models can reach 1-1.5 years, for inventions - 1.5-3 years.

After receiving the decision to grant a patent, the applicant will need to pay the appropriate grant fee, as well as an annual fee for maintaining the patent. After the office verifies the payment of fees for the grant of a patent, registration of the invention and maintenance of the patent in force, an electronic patent is sent to the applicant. The issuance of patents on paper in China is not provided.

We draw the attention of applicants to the fact that there is a bilateral agreement between China and the Russian Federation under the accelerated PPH (Patent Prosecution Highway) procedure. A Russian applicant, when translating an international application to the national phase in China, simultaneously with the request for substantive examination, can file a request for an expedited procedure for consideration of the PPH application, which will significantly reduce the time for consideration of an international application for a patent for an invention in China, i.e. not only the time for preparing the first notification, but also all examination actions, including the issuance of a title of protection, will be reduced.

Participation in the PPH program is possible if the applicant receives a certificate of patentability of at least one independent claim from a PPH partner Office, including Rospatent, or if a positive opinion on patentability is obtained in a written opinion of the International Searching Authority, the International Preliminary Examining Authority or in the International Preliminary Examination Report.

To participate in the PPH program, it is necessary to submit to the Chinese Patent Office an application for expediting prosecution work, attaching a set of necessary documents to it.

However, despite the presence of a positive international search, the examiner of the Chinese Patent Office can independently conduct an additional search, and identify a new source to counter the non-compliance of your solution with the patentability conditions, and send an appropriate request to the applicant.

As previously noted, the Russian applicant can independently file the initial application with the Russian Patent Office and then the PCT international application with priority over the initial application.

However, when planning to patent inventions and utility models in China, it is worth considering that foreign applicants can only apply for a patent through Chinese patent attorneys.

At the same time, independent translation of the application materials into Chinese by applicants, search for Chinese patent attorneys, conclusion of contractual relations with them and correspondence regarding the processing of the application, neglecting the services of patent attorneys of the Russian Federation, can lead to irreparable errors, serious time and financial costs.

In order to save costs, time and nerves, as well as to increase the chances of obtaining a patent for an invention/utility model in China and other countries, we recommend filing applications through patent attorneys who have long-term experience working with verified patent attorneys in China.