In brief: patent prosecution in China

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 such 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 co-own the patent on such invention. For an invention made by an independent contractor or a joint venture, the invention and the patent on such invention will be owned according to the agreement; if there is no agreement on ownership, the party that accomplishes the invention will own the invention and the patent on such invention.

Patent ownership and its transfer is officially recorded on the patent register, which is managed by CNIPA.

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

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 to the patenting timetable. In practice, it will typically take two to three years to obtain a patent for invention, and about one year to obtain a patent for utility model or for design.

Costs usually include two parts:

• Official fees for China National Intellectual Property Administration offices (CNIPA). There is a list of various official fees for different process, totalling around US$500 for invention (there may be extra fees for highly complicated patent applications) and much less for utility models and design patents.
• 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. So far, the Chinese Patent Office has cooperation with the patent offices of the United States, the European Patent Office, the Japanese Patent Office and the Korean Patent Office in the PPH programme. Extra fees may be required for PPH, such as in the Korean Patent Office.

The CNIPA may expedite the patent prosecution process through the Rapid Examination Channel, which only apply 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, and 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 (technical problems to be resolved, solutions and technical effects), and figures to illustrate the invention. The Patent Examination Guidelines promulgated by the Chinese patent administrative department provide what to include in the application in details.

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

For applications for invention patents or utility model patents, the applicant should disclose the ‘background technology’ of the invention, but there is no compulsory requirement for the inventor to disclose prior art. Failure to disclose or not 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 invention disclosed in an earlier filed application if the earlier patent application contains more than one invention. The content of the division applications shall not go beyond the original scope of the earlier filed application, and the claims in the division applications shall be directed to different inventions as claimed in the earlier application.

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 of the Patent Office (RIDPO), CNIPA. If the RIDPO of the CNIPA upholds the decision of the patent office, the applicant may appeal the CNIPA’s decision in a court of law. In China, all the CNIPA’s decisions will be subject to the jurisdiction of Beijing Intellectual Property Court.

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

From the time the applicant files a patent application to the CNIPA patent office, 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 shall 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 such priority disputes. If the applicants cannot reach an agreement, neither party will enjoy the priority for the same 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 procedures for modifying, re-examining or revoking a patent. However, when any third party challenges the patent before the RIDPO of the CNIPA, the RIDPO of the CNIPA will re-examine the patent based on the reasons and evidence as submitted by the challenger, and at the same time, the patentee may amend the claims of the patent accordingly. The patentee may waive the patent right before the patent office. During a lawsuit, the court can only interpret the claim and has no authority to amend the patent claims.

How is the duration of patent protection determined?

The duration of a patent right for invention is 20 years, and the duration of patent rights for utility models and patent rights for design is 10 years. The duration for the design patent will be 15 years under the new Patent Law, which will come into force on 1 June 2021. 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 rather than the filing date of the patent.

Law stated date

Give the date on which the information above is accurate.

13 April 2021.