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Author
Kristina Mulina

Assistant to Patent Attorney

15 July 2019

The process of patenting inventions and utility models in China

Currently, one of the states with a continuously growing economy is China, and therefore the interest in obtaining the patent rights in China remains not only relevant, but it is growing every year.

The applications for inventions and utility models are filed with the China National Intellectual Property Administration (abbreviated, CNIPA). Earlier, before August 28, 2018, before the restructuring, the former name was the following: the State Intellectual Property Office of China (SIPO). Due to the change of the name, the domain name of the official website was also changed to www.cnipa.gov.cn (the Chinese version) and to english.cnipa.gov.cn (the English version).

The foreigners, the foreign enterprises and other foreign organizations that do not have a permanent representative office or the headquarters in China have to file the applications for patenting inventions and utility models through the Chinese patent attorneys, and this is the reason why the applicant issues a power of attorney to do business in China to such attorneys.

To file an application for an invention, the following information shall be provided:

- the data and address of the applicant/applicants;

- the data and address of the inventor/inventors;

- a description, the claims, an abstract and the drawings (if any);

- a power of attorney signed by the applicant (notarization or legalizing is not required);

- a certified copy of the priority document (in case, if the convention priority in respect of the application is requested), which must be filed with the CNIPA not later than three months from the date of filing the application.

The very procedure for considering the application for an invention is as follows.

The application is filed with the CNIPA in Chinese, thus, if the priority application or the international application is made in another language, it is necessary to carry out its translation into Chinese, and to submit it to the CNIPA only simultaneously with filing the application. It does not seem possible to extend the period for submitting the translation of the application to Chinese (after filing the application), unlike in some other countries. If the application is filed without the translation, it will be refused. If all formal requirements are observed and the documents are provided, the application for an invention is subject to a formal examination, and this application is published within 18 months from the priority date/the date of filing the application. The applicant is also entitled to make a request for an early publication of his application. The request for a substantive examination should be made simultaneously with filing the application or within three years from the date of filing the application with the CNIPA. It is noteworthy that if the request for a substantive examination and for an early publication is filed simultaneously with filing the application, then the examination regarding this application will start earlier than the one regarding other applications that have been filed at the same time.

After the request for a substantive examination is filed, the Office may send the first request for a substantive examination within 12-15 months. If the response to the request filed in time overcomes the expert’s comments, the CNIPA will issue a notice on granting a patent, and the applicant will pay an appropriate fee for granting within two months from the date of the decision on granting, as well as an annual fee for the year, in which the patent has been granted, the CNIPA will send the original patent and it will exercise the registration in the Register. You can find below a copy of the original patent for an invention, which has been obtained by our company.

 

It takes 2-3 years at an average to carry out the process of patenting inventions in China, and the period of the effect of the patent for an invention is 20 years from the date of filing the application.

To file an application for a utility model, one should provide the same information as for filing an application for an invention, which is mentioned above in this article.

The procedure for the consideration of the application for a utility model differs from the procedure for the consideration of the application for an invention and it is as follows.

The application is filed in Chinese with the CNIPA. A preliminary examination starts within 3-6 months after filing the application, which includes an examination for the check of the compliance of the application with the formal requirements and the obvious significant shortcomings. If, it is established after the preliminary examination that the application complies with all the formal requirements, the CNIPA makes a decision on granting the patent for a utility model. Thus, the substantive examination regarding the applications for utility models is not conducted, unlike the applications for inventions. Since the substantive examination is not carried out, in principle, the decision on granting a patent is made without carrying out a search in the prior art. However, the absence of the substantive examination does not mean that each application will be immediately accepted. The experts often make official requests objecting to particular claims of the claims that, as a rule, do not comply with the novelty. In this case, the applicant may amend the claims so as to distinguish his solution from the prior art, or he may present the arguments in support of the novelty of its technical solution.

Upon the receipt of the decision on granting a patent for a utility model, the applicant will have to pay an appropriate fee for granting, as well as an annual fee for the year, in which the patent has been granted, the fees being paid within two months from the date of the decision on granting, the CNIPA thereafter will send the original patent and it will exercise the registration in the Register. You can find below a copy of the original patent for a utility model, which has been obtained by our company.

If the request regarding the application has not been received, then it takes not more than 9 months at an average from the date of filing the application with the Chinese Office till making a decision on granting a patent in order to carry out the process of patenting in China, and the period of the effect of the patent for a utility model is 10 years from the date of filing the application.

The volume of the patent rights for an invention and a utility model is limited by the claims, in which a description and the figures (if any) can be used to explain the claims.

At the same time, I would like to draw the applicant's attention to the fact that the applications filed with the CNIPA are not applicable to the territory of Hong Kong. To defend their rights in Hong Kong, one should file the application (on the basis of the application filed with the CNIPA) within 6 months from the date of the publication of the application.

As can be seen from the process of patenting inventions and utility models in China that is described above, a lot of nuances should be taken into account, while filing the application, in this regard, we would recommend filing the applications through the patent attorneys, who have the long-term experience in working with the patent attorneys of China. Our company is such a company, and we will be happy to advise you and assist in obtaining the patent rights in China and beyond it.

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