By Christine Miles, DHH (DeHeHeng) Law Firm
In today’s rapidly evolving technological landscape, intellectual property rights, particularly patents, play a crucial role in safeguarding innovation and promoting economic growth. Nowhere is this more evident than in China, a global powerhouse in the field of information technology (IT). Understanding the intricacies of IT related patent registration in China is essential for businesses and innovators seeking to protect their inventions and secure a competitive edge in the market.
Contents
1. Understanding IT Related Patents in China
2. Legal Framework for Patent Registration
3. Eligibility of technologies to Patent Registration
5. Challenges and Considerations
6. Enforcement and Protection of IT Patents
1. Understanding IT Related Patents in China
IT encompass a wide range of technological innovations, including software, hardware, algorithms, and digital processes. Registering patents grant exclusive rights to inventors, allowing them to prevent others from making, using, or selling their patented inventions without permission. With China’s booming IT sector driving innovation across various industries, securing patent protection is critical for businesses looking to capitalize on their technological advancements.
However China did not, until recently, authorise the registration of patents on all technologies and the applicable regime has recently evolved. Let’s dive into it.
2. Legal Framework for Patent Registration
China’s legal framework for patent registration is governed by laws and regulations set forth by the China National Intellectual Property Administration (CNIPA). The Patent Law of the People’s Republic of China and its implementing regulations outline the procedures and requirements for obtaining patent protection in the country.
Additionally, international treaties such as the Patent Cooperation Treaty (PCT) provide avenues for filing international patent applications in China.
Technology has progressed significantly since the early days of patent laws in the world. Compared to other regions, China’s patent law is quite young (being first established in 1984), but it was similarly facing difficulties in coping with the domestic and worldwide explosion of innovations as a number of such innovations could not enter into the eligibility criteria of the patent laws and regulations for patent registration. People were then trying to use a myriad of creative ways to protect business methods, computer softwares and other less tangible innovations. For example, computer programs as such could not be patented, but they may be protected by copyright under the Regulations on Computers Software Protection, formulated in accordance with the Copyright Law, which defines computer programs as literary work. An invention containing a computer program may on the other hand be patentable if the combination of software and hardware as a whole could actually improve the prior art, bring about technical results and constitute a complete technical solution.
From 2020 and the amendments to Patent Law, reforms started to open the door to registration of patent in China for computer softwares and algorithms under certain conditions. It is worth mentioning that even if the Chinese patent system is relatively friendly to software or algorithm patent applications, it is still necessary to have the knowledge of their subject matter eligibility, in order to successfully obtain patent rights in China.
3. Eligibility of technologies to IT Patent Registration in China
As mentioned above, not all IT inventions are eligible for IT patent registration in China.
Recent reforms allowed the followings to be eligible to apply for patent:
1. In the field of computer programs, the following two new categories of subject matters related to computer programs:
- Device implementing the method;
- Computer readable storage media;
- Computer program products; this refers to a software product implementing a solution primarily through a computer program.
Eligible subject matters can now include “a method,” “a computer device/apparatus/system”, “a computer-readable storage media”, “a computer program product”, etc. Indeed, with the development of IT, more and more computer software no longer rely on traditional tangible storage media such as compact discs and magnetic disks, but is transmitted, distributed and downloaded in the form of signals through the Internet. The protection of computer programs is no longer limited to tangible storage media.
2. In the medical field, diagnostic methods are ineligible for patent protection. However, to help examiners differentiate between diagnostic methods and non-diagnostic methods (the latter being eligible to patent), Chinese regulations provide a list of examples of non-diagnostic methods (“inventions that are not diagnostic methods”). The list has now been expanded to include “Information processing methods where all steps are executed by devices such as computers”. This aims at promoting innovation and patent protection in the smart medical field.
3. In the AI field, there are two situations where artificial intelligence (AI) and big data algorithms can be eligible to patent protection:
- When the involved algorithm (i) has a specific technical relationship with the internal structure of a computer system, and (ii) can solve a technical problem to improve the internal performance of the computer system that complies with the laws of nature.
- When the solution of the claim aims to process big data in the specific application field by (i) using the internal relationships in the data mining that conforms to the laws of nature, (ii) solving the technical problem of how to improve the reliability or accuracy of big data analysis in the specific application field, and achieving corresponding effects.
Generally speaking, the patentability examination of patent applications for IT inventions will be conducted as follows: (i) examination of patent eligibility and (ii) examination of novelty and inventiveness.
Examination of the patent eligibility will first aim at determining whether the claimed subject matter falls under the rules and methods for mental activities in the meaning of article 25 of the Patent Law; if not, it will be checked whether it incorporates technical features, such as those related to computer programs, algorithms, and artificial intelligence (AI), and constitutes a technical solution and achieves corresponding effects (“three elements of technology test”).
Novelty and inventiveness are evaluated on all features described in the claim, including both the technical and non-technical features.
As far as AI and big data algorithms are concerned, inventions involving improvements in AI algorithms (deep learning, classification, clustering, etc.) may qualify as technical solutions if they solve technical problems such as enhancing hardware computation efficiency or execution effectiveness.
4. Patent Application Process
The process of IT patent registration in China for computer software or algorithms involves multiple steps, from initial preparation to final approval. Applicants are encouraged to conduct thorough prior art searches to assess the novelty of their inventions before submitting their applications. Applicants are also advised to clearly describe the technical problem, means and effects of the software or algorithm in the specification. Several application scenarios should also be incorporated to strengthen the eligibility of the patent. Check the full process of design registration in China.
Once filed, applications undergo substantive examination by CNIPA examiners to determine their patentability. The examination process typically takes several years, during which applicants may engage in communications and negotiations with examiners to address any concerns or objections raised.
5. Challenges and Considerations for IT patent registration in China
While obtaining patent protection for IT inventions in China offers numerous benefits, it also presents challenges and complexities. Common pitfalls include navigating China’s intricate patent laws, overcoming language and cultural barriers, and addressing potential patent infringement risks. To mitigate these challenges, applicants should seek guidance from experienced patent attorneys and adopt proactive strategies for protecting their intellectual property rights.
6. Enforcement and Protection of IT Patents
Enforcement of IT patents in China involves legal remedies such as civil litigation, administrative enforcement, and customs protection. Successful enforcement requires diligent monitoring of market activities, swift action against infringers, and collaboration with local authorities and law enforcement agencies. Additionally, businesses should explore licensing and cross-border enforcement strategies to maximize the value of their patented inventions.
7. Case Studies
Examining real-world examples of successful tech patent registrations in China offers valuable insights into the patent application process and enforcement mechanisms. One notable case is that of Huawei Technologies, which has consistently been one of the top filers of tech patents in China. Huawei’s strategy includes robust R&D investment, meticulous patent portfolio management, and proactive engagement with CNIPA during the examination process. Their success underscores the importance of thorough prior art searches, clear and comprehensive patent applications, and strategic patent filings in both domestic and international markets.
Another illustrative example is the case of Xiaomi Inc., which faced numerous patent infringement lawsuits in its early years. Xiaomi’s response involved bolstering its patent portfolio through both in-house innovation and strategic acquisitions. This approach not only protected their existing technologies but also enabled them to negotiate cross-licensing agreements, reducing litigation risks and fostering collaborative relationships with other tech giants.
8. Conclusion
Navigating IT patent registration in China requires a comprehensive understanding of the legal framework, procedural requirements, and strategic considerations involved. By leveraging the insights and strategies outlined in this guide, businesses and innovators can navigate the complexities of IT patent registration in China effectively and safeguard their intellectual property rights in one of the world’s largest and most dynamic markets. As China continues to strengthen its intellectual property protection regime and promote innovation-driven development and to develop a range of guidelines for guiding IT patents applicants, proactive engagement with the patent registration process will be instrumental in unlocking opportunities and driving success in the IT industry.
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