Q&A: patents in China

Patent enforcement proceedings

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

A patentee can enforce patent rights against an infringer by filing a patent infringement lawsuit with the civil court or filing a patent law violation accusation to the local offices of the China National Intellectual Property Administration (CNIPA). CNIPA offices will decide whether there is an infringement, and if an infringement is found, the local CNIPA office can ask the infringer to stop the infringement, but it has no jurisdiction over damages for patent infringement.

There are specialised IP courts in Beijing, Shanghai and Guangzhou. By the end of 2020, the Hainan Free Trade Port Intellectual Property Court was established. A patent infringement lawsuit in these four jurisdictions must be brought to the corresponding IP court. There are also some specialised panels within local intermediate courts in which a patent infringement lawsuit must be brought. Where there is such a specialised court or panel, patent litigation within their jurisdictions (assigned by the Supreme Court) must be brought to these specialised courts or panels. Where there is no specialised court, the patent infringement lawsuit must be brought to the intermediate court of the city where the provincial government is located or the intermediate court that is designated by the Supreme Court.

According to the latest rule from the Supreme Court, all appellate cases of patent litigation shall be directly appealed to the Supreme Court.

What is the format of a patent infringement trial?

In a patent lawsuit, all the parties must follow the guidance of the court. Each party may produce evidence and affidavits to the court, and the judge will make all decisions. The court usually focuses on the determination of infringement and damages. Statutorily allowed types of evidence are:

• statements of the parties;
• documentary evidence;
• physical evidence;
• videos and voice records;
• electronic data;
• witness testimonies;
• the opinion of judicial appraisal; and
• investigation notes.

To that end, a judicial appraisal opinion that compares technologies and live testimonies made by technical experts is admissible and very persuasive to the court.

Cross-examination of witnesses is permitted, and without cross-examination the testimony of a witness will not be taken into consideration by the court. Experts are used in many patent cases. Each party can hire experts to explain specific technical matters.

Judicial appraisal is also widely used by the court to assist the judge in determining the technical issues. All disputed issues will be decided by a judge, and there is no jury system in China. In some courts, technical investigation officers will assist the judge in making decisions related to technology.

The Civil Procedure Law provides that the first instance shall be finished within six months, but time spent on judicial appraisal will not be calculated in this time limit. Depending on the content and the complexity of the case, it usually takes one-and-a-half to two years for a patent lawsuit to finish the first instance and to obtain a judgment.

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

In general, the patentee bears the burden of proof for establishing each constitutional element of infringement, which means the patentee must prove that:

• its patent is valid;
• the accused infringer conducts at least one of the following activities:
  • manufacture;
  • import;
  • offer for sale;
  • sales; or
  • use of the accused product or process for production or business purposes; and
• the accused product or process falls within the scope of protection of the patent claims.

As an exception, for a process patent to manufacture a new product, once the patentee proves the patent is valid and the accused product is the same as the product manufactured by the patented process, the patentee need not prove that the accused process falls within the scope of protection: instead, the alleged infringer bears the burden of proof to produce evidence to prove the difference between the accused process and the patented process. 

Anyone, including the alleged infringer, can challenge the validity of a patent before the CNIPA. The party that challenges the validity of the patent has the burden of proving the patent is invalid by showing the patent’s lack of novelty or creativity, among other invalidation grounds.

There is no issue regarding the unenforceability of a patent in China, and all patents are enforceable unless invalidity is proved.

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

The patentee or the exclusive licensee, or both, may individually or jointly sue for patent infringement against an infringer. A non-exclusive licensee may also sue for patent infringement with special authorisation by the patentee. The non-exclusive licensee may join the patent infringement lawsuit initiated by the patentee as co-plaintiff.

Chinese law does not provide that the accused infringer may bring a lawsuit on the accusation, and, in practice, the Supreme Court sets the rules that the accused infringer, under certain prerequisites, may bring a lawsuit to obtain a judicial ruling to declare and confirm that the accused products will not infringe the patentee’s right. The prerequisites to initiate a non-infringement declaration are that:

• the patentee has sent a warning letter to the accused infringer or the distributors of the accused products;
• the accused infringer urges the patentee to enforce the patent rights with proper jurisdiction; and
• the patentee does not file a patent infringement lawsuit nor withdraws the warning letter within a reasonable period (one month after the accused infringer received the warning or two months after the patentee sent the notice).

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

The Patent Law does not provide for indirect infringement of a patent. In practice, the court may find indirect infringement under certain conditions. There are three typical scenarios in which a party will be jointly liable for patent infringement:

• the party knows the product or process is protected by patents but still actively induces another party to implement the patented products or processes;
• the party knows that the products at issue are materials, equipment, parts or intermediates that are specially used to implement a patent, but still provides those products for sale, and the products are finally used by another party (including the final user or consumer) to implement the patent; and
• the party conspires with other parties in patent infringement, and each party practises only some of the elements (or steps) of a patent claim, but together they practise all the elements.

In general, the inducing or assisting party will be jointly liable for patent infringement when there is actual patent infringement by the induced or assisted party; however, if the induced or assisted party is not liable for patent infringement owing to special defences, the inducing or assisting party may still be liable for patent infringement.

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?

Multiple parties can be joined as defendants in the same lawsuit. The requirements to join the defendants are that the defendants are essential to the lawsuit for the court to determine the key issues of the case and have a connection to the infringement on the same patent. Defendants that make, use or sell the same products can be joined as defendants in the same lawsuit.

If the patentee only sues the seller of the accused product, the manufacturer may request to join the lawsuit to provide effective defence arguments; however, if the plaintiff opposes the decision to join the multiple defendants, the court may decide to join the related party as a third party in the lawsuit.

In China, courts will hear each patent as a separate case, so all the defendants must be accused of infringing the same patent.

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Owing to the territoriality of patent rights, activities that take place outside China will not be subject to the jurisdiction of a Chinese court. To violate China’s patent law, one of the following three types of conduct must occur in the territory of China: importation, offer for sale, or use or sales. Therefore, a patentee has the right to prevent, for example, the import of a product protected by a Chinese product patent or process patent, even if the product is manufactured outside the jurisdiction of China.

If a party outside China conspires with other parties within China, and some of the activities take place outside China, those activities will also be liable for patent infringement in China.

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

The Patent Law does not have provisions on infringement by equivalents.

The Supreme Court has issued an interpretation on infringement by equivalents. According to this interpretation by the Supreme Court, an equivalent will be found if the technical feature in the accused product or process uses similar means, realises similar functions or achieves similar effects as the technical feature in the claim, and an ordinary person in the art may conceive of the feature without creative work when the alleged infringement occurs.

The equivalence rule is limited by the rules of estoppel and dedication.

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

There is no discovery of evidence process in the Chinese judicial system. To obtain evidence from an opponent, third parties or government authorities, the party may file a motion to request the court to collect evidence from the opponent, third parties or government authorities. The administrative authority handling the patent infringement matters may order the party being investigated to submit relevant evidence. For example, the amount of compensation for any damage caused by the infringement of patent rights shall be assessed on the basis of the actual losses suffered by the right holder because of the infringement or the profits the infringer has earned because of the infringement. For this purpose, if the right holder has tried to provide evidence but the account books and materials related to infringement are mainly in the infringer’s grasp, the patentee can request the court to order the infringer to provide the account books and materials related to the infringement. 

In some courts, such as the Beijing courts, the lawyer may also request that the court issue an evidence investigation order so that the lawyer may collect the relevant evidence from the above parties. Recently, the Beijing courts have started to explore the possibility of establishing an evidence discovery rule.

For evidence outside the country, the party with the burden of proof should obtain the evidence from the foreign country. The court may also request a foreign court to assist in the collection of evidence on the basis of a reciprocity principle or international treaty in which China is a participant.

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

The court will arrange a timetable for a patent infringement lawsuit as follows:

• production by both parties of evidence, witnesses and experts, which may take several months for multiple rounds;
• cross-examination, which may take one to two months;
• when necessary, judicial appraisal and cross-examination of the judicial appraisal report, which may take three to five months;
• court arguments, which may take one to two months; and
• issuance by the court of the judgment of first instance.

It will usually take 18 to 24 months for a patent infringement lawsuit in trial proceedings. For appellate proceedings, the process is quite similar to first instance proceedings, but usually there will be no further judicial appraisal process. Appellate proceedings usually take about 12 months.

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?

For a patent infringement lawsuit, the typical costs include three parts:

• court fees to be charged by the court, which are calculated according to a gradient table but are generally related to the targeted amount of the subject matter;
• attorneys’ fees, which vary for different law firms and range from tens of thousands of US dollars to millions of US dollars, depending on the complexity of the case; and
• investigation costs, judicial appraisal costs and other relevant costs.

Contingency fees are permitted but are not common practice for patent lawsuits in China.

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

Following an adverse decision in a patent infringement lawsuit, a party may appeal to a higher-level court of the first instance court. The appellate court will be clarified in the judgment, usually at the end of the judgment. All appellate patent infringement cases (not including design patent cases) are subject to the jurisdiction of the Intellectual Property Division of the Supreme Court.

If new evidence is found after the first instance hearing, the new evidence is allowed at the appellate stage in China.

If the evidence existed and can be found and submitted by the appellant during the first instance proceedings, but the appellant did not submit the evidence on purpose or owing to gross negligence, the court may refuse to consider the evidence at the appellate stage.

For evidence that can prove the fundamental facts of the case, the court may still allow the evidence but may impose certain penalties, such as a fine, on the appellant.

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition or a business-related tort?

If the patent owner enforces a patent in a wilful way, the patent owner will be exposed to liability for competition violations, unfair competition or a business-related tort, depending on the specific activities of the patent owner. For example, if the patent owner enforces the patent against other competitors knowing that the patent lacks novelty or inventive steps against the prior art, the patent owner will be exposed to liability for a business-related tort.

The Antitrust Law provides that the abuse of IP rights may constitute monopolistic conduct. The State Administration for Market Regulation (SAMR), formerly the State Administration of Industry and Commerce, specifically promulgated the Rules on Prohibiting the Abuse of IP Rights to Exclude or Restrict Competition, which provide that a market operator that has a dominant position shall not, in exercising its patent rights, exclude or restrict competition by restricting transactions, tying, adding unreasonable transactional conditions or discriminating in treatment or conduct of the joint operation of patent rights to exclude or restrict competition. The Anti-Unfair Competition Law is currently being revised, which may involve the abuse of IP.

If the above rules are violated, the SAMR has the power to order a halt to the violating activity, confiscate illegal gains and impose a fine of 1 to 10 per cent of the violator’s annual sales income of the previous year. The state may also issue further guidance on anti-monopoly aspects of IP rights.

The conduct of filing a lawsuit for patent infringement may also constitute an abuse if the plaintiff:

• knew that its patent was invalid but still wilfully filed the lawsuit; or
• obtained preliminary injunction in the lawsuit, but the court eventually denied the accusation of patent infringement (the plaintiff should then pay the defendant damages caused by the injunction).

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

For patent validity disputes, alternative dispute resolution measures, such as arbitration, are not allowed; the parties can only resolve validity disputes before the CNIPA.

For patent disputes regarding infringement, ownership or damages, there are different views on whether the parties may submit disputes for arbitration; the majority opinion is that the parties can reach an arbitral agreement to resolve disputes through arbitration. In addition, a patentee may enforce patent rights against an infringer by filing a patent law violation accusation to the local offices of the CNIPA. CNIPA offices will decide whether there is an infringement, and if an infringement is found, the local CNIPA office can ask the infringer to stop the infringement, but it has no jurisdiction over damages for patent infringement.

For patent licence disputes, the parties may choose arbitration in the agreement to resolve disputes.

Scope and ownership of patents

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

There are certain subjects of inventions that cannot be granted patent protection in China. The following subjects are not entitled to patents:

• scientific discoveries;
• rules and methods of mental activities, such as software and business methods;
• methods for the diagnosis or the treatment of diseases, such as medical procedures;
• animal and plant varieties;
• substances obtained by means of nuclear transformation; and
• a design that is used primarily for the identification of a pattern, colour or a combination of the two on printed flat works.

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

An invention made by a company employee during work or mainly using the material and technical means of the company will be considered as a service invention, and the company will own the patent on the invention unless the company and the employee agree otherwise.

For an invention made by multiple inventors, if it is not a service invention, the inventors will co-own the invention and the patent on the invention.

For an invention made by an independent contractor or a joint venture, the ownership of the invention and the patent will be in accordance with the agreement. If there is no agreement on ownership, the party that accomplishes the invention will own the invention and the patent on the invention.

Patent ownership and its transfer is officially recorded in the patent register, which is managed by the China National Intellectual Property Administration (CNIPA).

Anyone may request the CNIPA to issue a copy of the register regarding the patent’s ownership or its transfer.

Defences

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in which to do this?

Anyone who believes that a patent does not satisfy the requirements of the Patent Law may challenge the validity of the patent. The most frequently used grounds include:

• the patented claims lack novelty;
• the patented claims lack inventive steps;
• the patented claims are not supported by the description;
• the description does not fully disclose the invention;
• the modifications are not disclosed in the original application documents; and
• the independent claim lacks the essential features to resolve the technical problem.

The challenge to patent validity must be submitted to the China National Intellectual Property Administration (CNIPA). The patentee or the challenger may appeal the decision of the CNIPA before the Beijing Intellectual Property Court for judicial review.

Is there an ‘absolute novelty’ requirement for patentability, and if so, are there any exceptions?

There is an absolute novelty requirement for patentability in China, and any prior art in the world can be used to challenge the novelty of a patent granted in China. The Patent Law does not provide exceptions to the absolute novelty requirement for patentability.

What is the legal standard for determining whether a patent is ‘obvious’ or ‘inventive’ in view of the prior art?

The legal standard for determining obviousness or inventiveness is that the invention has prominent substantive features and represents a notable progression. The invention would be considered as obvious over the prior art if, when compared with the closest prior art, the distinguishing features are taught by the prior art (ie, there is motivation for a person skilled in the art to apply those features to the closest prior art to solve the same technical problems).

In practice, the CNIPA usually adopts a three-step measure to decide whether an invention is inventive:

• to find the closest prior art;
• to find the differences between the prior art and the applied patent; and
• to conduct the teaching-suggestion-motivation test to decide the inventive steps (eg, if the difference is common knowledge, the CNIPA would conclude that the invention is not inventive).

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the inventors or the patent owner, or for some other reason?

There are no grounds on which a valid patent will be deemed unenforceable owing to misconduct by the inventors or the patent owner under Chinese laws. If the patent right owner abuses the patent right or illegally monopolises technology development by, for example, imposing restrictions on improvements to the patented technology, the patent right owner may be liable for business tort or the contract will be considered void.

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial uses?

It is a defence if an accused infringer has been privately using the accused method or device prior to the filing date. If the prior use is before the filing date (priority date), the user may continue the use after the patent has been granted and the patentee’s licence is not needed (limited only to its scope of original use and production capacity, with no expansion). If the prior use is after the filing date but before the publication date, the use will not be considered as an infringement, but the user will have to stop the use after the patent has been granted.

The defence covers all sorts of patents, namely, patents for inventions, utility models and designs. The defence is directed to commercial uses, and non-commercial use itself is not an infringement under the Patent Law.

Remedies

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards tend to be nominal, provide fair compensation or be punitive in nature? How are royalties calculated?

Monetary damages are available against a patent infringer and will start to accrue from the date on which the infringing activities start, subject to the expiration of the protection period of the patent.

The Patent Law, which came into effect on 1 June 2021, provides that punitive damages will be applied if there is intentional or wilful infringement, and the punitive amount may be one to five times the fair compensation.

Under the Patent Law, awards of damages should be ‘fair compensation’, and their calculation can be based on different measures. The court will apply these calculation measures in the following priority order:

• the actual losses of the patentee;
• the profits obtained from the infringement by the infringer;
• the royalties with reasonable times (usually one to three times, but this is not punitive damages in nature); or
• if the above measures are not feasible, damages of 30,000 to 5 million yuan, subject to the discretion of the judge.

The royalties should be the actual amount paid by an independent third party on the same patent.

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an injunction effective against the infringer’s suppliers or customers?

The courts in China are generally very cautious in granting temporary injunctions; however, on 12 December 2018, the Supreme Court promulgated new rules regarding preservation in IP disputes, which became effective on 1 January 2019. Articles 6 and 7 provide the latest rules regarding how courts should review and approve requests for temporary injunctions. These new rules provide clearer standards for Chinese courts to follow.

Under the current rules, if an infringement has been found by the court, it is usual practice to grant a permanent injunction against future infringement. If there will be harm to the patentee that cannot be remedied by monetary compensation, the court may grant a preliminary injunction before granting the permanent injunction.

The injunction is directly targeted against the defendant, not other non-parties to the lawsuit; therefore, in principle, an injunction will not be effective against a non-party. 

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or proceeding available to accomplish this?

The patentee may register its patents with customs, and customs will block the importation of infringing products into China. The patentee may also provide information to customs regarding specific infringing products so that customs may block the infringing products. After customs detains the infringing products, the patentee should file the patent infringement suit before the court; otherwise, customs will release the detained products.

Under what conditions can a successful litigant recover costs and attorneys’ fees?

The Patent Law provides that compensation for patent infringement should include the reasonable expenses of the patentees. These reasonable expenses will include the costs for the suit (eg, evidence investigation costs and witnesses’ travelling and accommodation expenses) and attorneys’ fees.

In practice, when a patent infringement is found, the court will grant patentees compensation to recover the costs and attorneys’ fees. In most cases, the patentee can only partially recover costs and attorneys’ fees. 

If no patent infringement is found in a patent infringement suit, the accused infringer will not be granted compensation to recover its costs or attorneys’ fees.

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine whether the infringement is deliberate? Are opinions of counsel used as a defence to a charge of wilful infringement?

The Patent Law provides additional remedies against a deliberate or wilful infringement of patent rights. In practice, the court will consider the facts if the infringement is deliberate or wilful when deciding the compensation for infringement.

The court will consider the facts on a case-by-case basis when deciding the deliberate or wilful patent infringement. For example, if an infringer has committed patent infringement repeatedly, the infringement will be found to be deliberate and wilful. The Patent Law provides punitive damages for wilful infringement, and the Supreme Court may further clarify how to determine whether there has been wilful and deliberate infringement.

The burden of proof for wilful infringement is on the patentee, and the accused infringer can use opinions of counsel as a defence to a charge of wilful infringement.

What is the time limit for seeking a remedy for patent infringement?

Under the current version of the Patent Law, the statute of limitations to seek a remedy for patent infringement is three years, which starts to count from the date the patentee knows or should have known about the infringing activities by the infringer. After the expiration of the statute of limitations, if the infringing activities are still ongoing, the patentee may seek a remedy for injunction and compensation, but the patentee can only seek compensation for the previous three years from the filing date of the suit.

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of failure to mark? What are the consequences of false patent marking?

The patent holder has the right to mark its patented products but no obligation to do so. The patent holder chooses to mark the patented products. The marks should include the types of patents and the patent numbers.

For the false marking of other patents, the patent administrative department may order the correction of the false marking and impose a fine of up to five times the revenue obtained therefrom or 250,000 yuan.

Licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

The Civil Code provides that a technology contract that illegally monopolises technologies or infringes upon others’ technological work products will be null and void. For example, restrictions will be null and void if the patent owner:

• restricts the licensee from making improvements to the patented technology;
• requests the licensee to share the improvements without any consideration; or
• restricts the licensee from challenging the validity of the licensed patent.

The Interpretation of the Supreme People’s Court on ‘Several Issues Concerning the Application of Law in the Trial of Technology Contract Dispute Cases’ also provides further explanation of an aforementioned contract that ‘illegally monopolises technologies’ by:

• restricting the licensee from making new research and development on the basis of the contractual subject technology or restricting the licensee from using the improved technology, or the conditions to exchange the improved technologies with each other are not reciprocal, including such circumstances as requiring one party to gratuitously provide the other party with the improved technology, to transfer the improved technology to the other party non-reciprocally, or to gratuitously and solely occupy or jointly own the intellectual property of the improved technology;
• restricting the licensee from obtaining, from other origins, technology similar to or in competition with that of the patent owner;
• impeding a licensee’s sufficient exploitation of the contractual subject technology in a reasonable way pursuant to market demands, including unreasonably restricting the quantity, varieties, price, sales channel or export market of the contractual subject technology exploited by the licensee in an obvious way to produce products or to provide services;
• requiring the licensee to accept attached conditions that are not necessary for exploiting the technology, including purchasing dispensable technologies, raw materials, products, equipment, services or accepting dispensable persons, etc;
• unreasonably restricting the channels or origins for the licensee to purchase raw materials, parts and components, products or equipment, etc; or
• prohibiting the licensee from making objections to the effectiveness of the intellectual property of the contractual subject technology or attaching conditions to the objections made.

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

The patent administrative department may grant a compulsory licence to an invention patent or a utility model patent upon the application of an eligible party under the following circumstances:

• if the patentee, after three years from the date on which the patent is granted and four years from the filing date, fails to exploit or fully exploit the patent without any justifiable reason; or
• the patentee’s act of exercising patent rights is determined as a monopolistic act.

The patent administrative department may also grant a compulsory licence to exploit the patent under certain circumstances, such as a national emergency, an extraordinary state of affairs or the public interest.

The patent administrative department will decide the scope and period of a compulsory licence. The royalty for the compulsory licence will be negotiated by the patent owner and licensee. If no agreement on the royalty is reached, the patent administrative department will decide the royalty.

A request for a compulsory licence is filed with the offices of the China National Intellectual Property Administration (CNIPA). The CNIPA is generally very cautious in granting a compulsory licence. In practice, the CNIPA has never granted a compulsory licence.

Patent office proceedings

How long does it typically take, and how much does it typically cost, to obtain a patent?

The Patent Law does not provide a statutory time limit for the patenting timetable. For an invention patent, thanks to the policy changes of the China National Intellectual Property Administration (CNIPA) in recent years, the speed of patent examination in China has accelerated. In practice, it will typically take two years to obtain a patent for invention, but this is heavily relevant on the specific technical field. A backlog of patent application examinations still exists in a few technical fields. In addition, it will typically take one year to obtain a patent for a utility model or a design.

Costs usually include two parts:

• official fees for CNIPA offices – there is a list of various official fees for different processes, totalling around US$500 for inventions (there may be extra fees for highly complicated patent applications) and much less for utility models and design patents; and
• agency fees for patent prosecution matters – depending on the agent and the technical solutions to be protected, these may vary from US$2,000 to $5,000. 

Are there any procedures to expedite patent prosecution?

There are programmes such as the Patent Prosecution Highway (PPH) in China. Thus far, the Chinese Patent Office is in cooperation with the United States Patent and Trademark Office, the European Patent Office, the Japanese Patent Office and the Korean Patent Office in the PPH programme. Extra fees may be required for the PPH, such as at the Korean Patent Office.

The CNIPA may expedite the patent prosecution process through the Rapid Examination Channel, which only applies to certain high technology areas.

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

For a patent application, the applicant must disclose the invention in a clear and complete manner. The general standard for the clear and complete requirement is that a person in the art can repeat the invention. For example, the description should include the title of the invention, the technical field to which the invention belongs, the technical background of the invention, the content of the invention (the technical problems to be resolved, the solutions and the technical effects) and figures to illustrate the invention.

The Patent Examination Guidelines promulgated by the Chinese patent administrative department provide, in detail, the items that should be included in the application.

Must an inventor disclose prior art to the patent office examiner?

There is no compulsory requirement for the inventor to disclose prior art to the patent office examiner. Failure to disclose or sufficiently disclose prior art will not affect the examination result or the validity of the patent.

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier-filed application? If so, what are the applicable requirements or limitations?

The patent applicant may file one or more division applications to pursue additional claims to the invention disclosed in an earlier-filed application if the earlier patent application contains more than one invention. The content of the division applications must not go beyond the original scope of the earlier-filed application, and the claims in the division applications must be directed to different inventions from those claimed in the earlier application. However, if the earlier-filed application has been rejected, withdrawn or deemed to have been withdrawn, the request for a division of the application may not be submitted.

Is it possible to appeal an adverse decision by the patent office in a court of law?

For an adverse decision by the patent office, the applicant may appeal the decision to the Re-examination and Invalidation Department (RIDPO) of the CNIPA. If the RIDPO upholds the decision of the CNIPA, the applicant may appeal the CNIPA’s decision in a court of law. In China, all of the CNIPA’s decisions will be subject to the jurisdiction of the Beijing Intellectual Property Court.

Does the patent office provide any mechanism for opposing the grant of a patent?

From the date of publishing an application for a patent, any person may file a third-party opinion to the patent office to oppose the grant of a patent for invention. The third-party opinion must be filed before the patent right is granted. The patent office will not respond to the party filing the third-party opinion, even if the third-party opinion is accepted by the patent office.

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

The patent office does not provide any mechanism for resolving priority disputes between different applicants for the same invention. The applicants must negotiate and reach an agreement on priority disputes or go to court to resolve the priority disputes. If the applicants cannot reach an agreement, none of the parties will enjoy priority for the invention.

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

The patent office does not provide special procedures for modifying or re-examining a patent after the patent is granted; however, if a third party challenges the validity of the patent before the CNIPA, the CNIPA will re-examine the patent based on the reasons and evidence submitted by the challenger, and at the same time the patentee may amend the claims of the patent accordingly.

During a lawsuit, the court can only interpret the claims and has no authority to amend the patent claims.

The patentee may waive the patent right before the patent office at any time after the grant.

How is the duration of patent protection determined?

The duration of a patent right for an invention is 20 years; the duration for utility models is 10 years; and the duration for design patents is 15 years. The duration will be calculated from the filing date of the patent application. The patent protection will start from the grant of the patent right date rather than from the filing date of the patent.

Update and trends

What are the most significant developing or emerging trends in the country’s patent law?

The Patent Law provides for a patent linkage system, a patent term extension system and open licensing. 

Regarding the patent linkage, the National Medical Products Administration (NMPA) and the China National Intellectual Property Administration (CNIPA) have released specific rules on how to resolve patent linkage disputes regarding drug patents. The Centre for Drug Evaluation of the NMPA has established a registration platform for patent information of the listed drugs.

Regarding patent extensions, the CNIPA has released rules and provides that for patents granted after 1 June 2021, the patentee may file a request to extend the patent term pursuant to section 2 or section 3 of article 42 of the Patent Law.

Regarding open licensing, the CNIPA has issued a pilot work plan, and patent open licence trading platforms have been launched in Beijing, Shanghai and Guangdong, etc, which will promote open licence patent transactions. On the platform, a patentee shall offer to license its patent, along with announcing its licence fee and payment method standards, and any entity may have the licence after notifying the patentee and paying the licence fee.

China joined the Hague Agreement concerning the International Deposit of Industrial Designs in 2022. The Hague System enables applicants to secure and manage international design protection simultaneously in multiple countries or regions through one application.