According to "Patent Cooperation Treaty Yearly Review" released by WIPO in 2014, the SIPO received 69,693 cases of Chinese national phase entries for PCT applications in 2012, ranked No. 3 among the PCT member states, merely after the USPTO and the EPO, which reflects the commercial attractiveness of the Chinese market for the applicants throughout the world.
When entering PCT applications into the Chinese national stage, applicants may develop different strategies according to their needs. Some applicants want to get adequate time for considering whether their technologies have commercial potentials in China, and whether it is valuable to obtain patent protection in China. For such applicants, it is often desirable to delay the Chinese entry of the PCT application, in order to have more time for consideration. Some applicants may have their technologies infringed by other entities in China, and desire to enter Chinese national stage as soon as possible and obtain corresponding patent rights, thereby seeking effective patent protection for their technologies. For such applicants, they may be interested in learning how to advance the procedure of entering the PCT application into Chinese national stage.
In view of the above, the author summarizes procedures, required documents, as well as other focuses worth noting for PCT applications when entering into the Chinese national stage at different time points, in order to facilitate the operations of applicants.
1. Normal entry into the Chinese national phase
If an applicant wishes to get patent protection in China for his PCT application, he shall go through the formalities of entering PCT applications into the Chinese national phase within 30 months from the earliest priority date (henceforth, “entry formalities”). The entry formalities must include the following operations.
- File a statement of entering the PCT application into the Chinese national phase in Chinese (hereinafter referred to as “entering statement”), requiring patent protection for invention or utility model (Note that: only one type can be selected, not both).
- Pay the filing fee within the 30-month period, together with the publication fee (Note that: the publication fee is only necessary for the patent application for invention). It should be pointed out that, a PCT application of which the SIPO acts as the Receiving Office may have the filing fee exempted when entering the PCT application into the Chinese national phase.
- Submit Chinese translation of the original specification and claims when the PCT application is filed in a language other than Chinese.
When the applicant has fulfilled the entry formalities, the SIPO will record the date for filing the Chinese translation or the date for payment of the prescribed fees, whichever is later, as the date of entry of the PCT application. The SIPO may not process or examine the PCT application prior to the expiration of the 30 months from the priority date.
2. Early national phase entry
Before the expiration of the 30-month period, if the applicant desires to get early processing and examination for the PCT application by the SIPO, the "entry formalities" should be accomplished. Additionally, the applicant must conduct following extra processing.
- Raise an explicit request according to corresponding provisions.
Specifically, the explicit request may be made at the entering statement. That is, the item "the 30-month period from the priority date has not expired, and early processing and examination of the PCT application by the SIPO in accordance with Rule 111 of the Implementing Regulations of the Patent Law is required" in column 19 of the entering statement form may be selected. Alternatively, the explicit request for early processing and examination may be put forward in a form of observations after the PCT application has entered into the Chinese national phase.
- Make sure that the SIPO has gotten a copy of the PCT application.
According to Rule 47.1 (a) of the PCT Regulations, the PCT application shall not be transmitted by the International Bureau to each Designated Office prior to the international publication of the PCT application. At the time the applicant requests the PCT application to enter into the Chinese national stage prior to 18 months from the earliest priority date, the PCT application has not yet been transmitted to the SIPO by the International Bureau. In order to meet the requirements for early entry into the Chinese national stage, the applicant may have the following selectable methods.
- Voluntarily submit a copy of the PCT application certified by the Receiving Office (i.e., "home copy").
- Voluntarily submit a copy of the PCT application certified by the International Bureau (i.e., "record copy").
- Request the SIPO to acquire a copy of the PCT application from the International Bureau. Specifically, the applicant may select the item “the PCT application has not yet been published internationally, and the SIPO as the Designated Office is requested to demand the International Bureau to transmit a copy of the PCT application to the SIPO” in column 19 of the entering statement form.
- Request the International Bureau to transmit a copy of the PCT application to the SIPO in accordance with Rule 47.4 of the PCT Regulations.
In the foregoing methods, obtaining a copy of the PCT application from the Receiving Office and providing it to the SIPO according to method (i) will raise efficiency. The other methods involve interactions with the International Bureau, thus have relatively slow reactions. After the early entry into the Chinese national stage, the PCT application will follow conventional handling procedures, and be taken up for examination in the order in which patent applications have been filed to the SIPO.
3. Late national phase entry
If a PCT application fails to enter into the Chinese national stage within the 30-month period, the "entry formalities" may be conducted within 32 months from the earliest priority date, accompanying with a payment of a surcharge (around USD 160).
That is, the documents (such as the Chinese translation of the PCT application, etc.) and the fees required in the “entry formalities” can be deferred until 32 months from the priority date. If the “entry formalities” have not been furnished completely within 32 months from the priority date, the PCT application will lapse in China.
Under the circumstance that the "entry formalities" have not been gone through within the 32-month period, the applicant may have a chance to restore the right before the SIPO using "force majeure" as the reason for restoration according to Rule 6, Paragraph 1 of the Implementing Regulations of the Patent Law, but cannot be able to restore the right using "other justified reasons" according to Rule 6, Paragraph 2 of the Implementing Regulations of the Patent Law. If the applicant requests to restore the right of the PCT application in China based on "force majeure", the request may be raised before the SIPO within two months from the date on which the impediment is removed, at the latest within two years immediately following the expiration of the corresponding time limit. It is prescribed in Article 153 of General Principles of the Civil Law of the People's Republic of China that, "force majeure" means unforeseeable, unavoidable and insurmountable objective conditions. For example, war, revolution, civil unrest, strikes, natural disasters or other similar reasons can be regarded as “force majeure”.
It should be noted that, the SIPO has declared reservation for “Reinstatement of Rights after Failure to Perform the Acts Referred to in Article 22” prescribed in Rule 49.6 of the PCT Regulations. That is, the applicant cannot use "unintentional" or "due care" reasons provided in Rule 49.6 of the PCT Regulations, to recover the PCT application in China.