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 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 co-own the patent on the invention.

For an invention made by an independent contractor or a joint venture, 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 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.

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 a utility model or a design.

Costs usually include two parts:

• official fees for the offices China National Intellectual Property Administration (CNIPA) — 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 in 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.

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 CNIPA. If the RIDPO upholds the decision of the CNIPA, the applicant may appeal CNIPA’s decision in a court of law. In China, all of 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 time the applicant files a patent application to CNIPA, 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 any time after the grant.

How is the duration of patent protection determined?

The duration of a patent right for 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 rather than from the filing date of the patent.

Law stated date

Give the date on which the information above is accurate.

1 March 2022.