By Christine Miles, DHH (DeHeHeng) Law Firm
In the dynamic sphere of intellectual property rights, China stands as a pivotal player, offering a robust framework for patent registration. With its burgeoning economy and technological advancements, securing a patent in China has become increasingly vital for innovators worldwide. In this article, we delve into the intricacies of patent registration in China, exploring the process, requirements, costs, and the significance of safeguarding intellectual property in this burgeoning market.
Contents
1. What Can be Registered as a Patent in China?
2. Reasons for Refusal of a Patent Application in China
3. The Patent Registration Process in China: A Step-by-Step Guide
4. Documents Required for Patent Registration in China
5. Patent Opposition Process in China
7. Why File a Patent in China?
1. What Can be Registered as a Patent in China?
In China, a wide array of innovations can be registered as patents, including inventions, utility models, and designs. Inventions encompass new technical solutions for products or processes or improvements thereof, utility models pertain to products’ shape or structure or combination thereof, or minor innovations improving the utility of existing products, while designs focus on the aesthetic appearance of a product.
2. Reasons for Refusal of a Patent Application in China
While China encourages innovation, patent applications may face refusal due to various reasons. Common grounds for rejection include lack of novelty, inventive step, or industrial applicability, insufficient disclosure of the invention, or violation of public order or morality.
In addition, the following types of inventions are not entitled to patent protection in China:
- 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.
Following application, the Chinese patent application undergoes a substantive examination in which a Chinese patent examiner considers the patentability of the Chinese patent application and whether it conforms to the various requirements of Chinese patent law. Applicants need to keep in mind that it’s far from fatal and the decision of rejection can often be overcome with the Chinese patent re-examination procedure. In this procedure, unless the applicant is convinced by the strength of his/her arguments, it is usually a good approach to amend the Chinese patent application and present further arguments.
3. The Patent Registration Process in China: A Step-by-Step Guide
Securing a patent in China involves a meticulous process governed by the China National Intellectual Property Administration (CNIPA). Here’s a detailed overview of the patent registration process:
Preliminary Research: Before initiating the patent registration process, it’s crucial to conduct thorough research to ensure the novelty and inventiveness of the proposed invention. This involves searching existing patents and literature to determine if the invention meets the criteria for patentability.
Patent Application Preparation: The first step in patent registration is preparing a comprehensive patent application. This includes drafting a detailed description of the invention, including its technical specifications, operation principles, and potential applications. Additionally, the application must include claims that define the scope of protection sought for the invention, along with any necessary drawings or diagrams to illustrate its features.
Filing the Patent Application: Once the patent application is prepared, it must be filed with the CNIPA. Applicants can submit their applications electronically or in hard copy, either directly to the CNIPA or through a qualified patent agency. Along with the application documents, applicants may need to pay the requisite filing fees.
Formal Examination: After the patent application is filed, the CNIPA conducts a formal examination to ensure that all required documents are in order and that the application meets the formal requirements stipulated by law. This includes verifying the completeness of the application documents and confirming the payment of filing fees.
Substantive Examination: Following the formal examination, the patent application undergoes substantive examination to assess its patentability. This involves evaluating the novelty, inventive step, and industrial applicability of the invention. The examination process may also include conducting a prior art search to identify any existing patents or publications that may affect the patentability of the invention.
Office Actions: During the substantive examination process, the CNIPA may issue office actions requesting additional information or clarification from the applicant. These office actions typically outline any objections or deficiencies identified in the application and provide the applicant with an opportunity to address them. Applicants are usually given a specified period to respond to office actions, either by amending the application or providing arguments to overcome the objections raised by the examiner.
Patent Grant or Refusal: If the patent application meets all statutory requirements and overcomes any objections raised during examination, the CNIPA will grant the patent and publish it in the official gazette. The patent owner will then receive a certificate of patent grant, confirming their exclusive rights to the invention. However, if the application fails to meet the patentability criteria or if the applicant does not adequately address the objections raised by the examiner, the CNIPA may refuse the application, and the applicant may have the option to appeal the decision.
Post-Grant Procedures: Once a patent is granted, the patent owner must pay maintenance fees periodically to keep the patent in force. Additionally, patent owners have the option to license their patented inventions to third parties or initiate legal proceedings to enforce their patent rights against infringers.
4. Documents Required for Patent Registration in China
To initiate the patent registration process, applicants must submit essential documents, including a patent application form, description, claims, drawings or photos (if applicable), and an abstract. Additionally, applicants may need to provide a power of attorney and priority documents if claiming priority rights. Also check how to register a trademark in China.
There exist some specificities in case the invention is related to specific products. If an application for invention involves nucleotide and/or amino acid sequences, the sequence listing shall be submitted as a separate part of the description. For an invention based on genetic resources, the applicant shall state the source of the genetic resources in request letter, and register direct and original source thereof in the documents. If the applicant is unable to cite the source, the reasons should be stated.
5. Patent Opposition Process in China
In China, third parties can challenge the validity of a granted patent through administrative proceedings or by filing an invalidation action with the CNIPA. During the opposition process, parties can present evidence and arguments to support their position, and the CNIPA adjudicates based on the merits of the case.
6. Patent Costs in China
The costs associated with patent registration in China vary depending on factors such as the type of patent and the complexity of the invention.
Filing stage
| Professional fee | Between 1800 USD and 2100 USD |
| Government fee | 140 USD |
Examination stage
| Professional fee | 560 USD |
| Government fee | 350 USD |
Granting stage
| Professional fee | 115 USD |
| Government fee | 50 USD |
The patent registration cost in Lithuania via the iPNOTE platform starts from as low as $3,015, which includes all government fees and document preparation. Find the best IP attorney in China on iPNOTE.
7. Why File a Patent in China?
Having your valuable patents registered and recognized in China will put you in a much better position when you explore options against infringers. A lot has been said about concerns of foreign enterprises over IP protection before entering the Chinese market. However, things have changed and it is now commonly recognized, included by foreign enterprises and even SMEs, that the situation has improved a lot and that the intellectual property system in China is full and regularly updated and allows intellectual property rights holders to assert their rights in China, with a pre-condition: that such rights be properly protected by implementing the proper registration formalities.
Filing a patent in China offers several compelling advantages for innovators. Firstly, it provides legal protection against unauthorized use, production, or sale of the patented invention, bolstering the innovator’s competitive edge in the market. Moreover, securing a patent in China facilitates market entry and fosters collaborations with local partners, enhancing business opportunities in the world’s second-largest economy.
In addition, the amounts of awarded damages have significantly increased in China, which means that not only can a patent holder make his rights recognized, it can also receive significant damages for the infringement caused to its intellectual property rights. To take Beijing courts as an example, the average amount of compensation awarded in technical cases increased from USD 70,000 in 2018 to USD 400,000 in 2022 (2023 report from Intellectual Property Court of the Supreme Court of China).
It is wise to mention that to optimize the protection of their interests, intellectual property rights holders are encouraged, depending on the rights they want to protect and if available, to protect their rights through various means, such as patents and trade secrets. This allows intellectual property rights holders, when confronted with intellectual property rights infringements by others, to make a comprehensive assessment of the various rights at their disposal and initiate as many legal actions as possible against the infringing party.
8. Conclusion
The patent registration process in China presents a gateway for innovators to safeguard their intellectual property and capitalize on the vast opportunities offered by the Chinese market. By understanding the intricacies of patent law, adhering to statutory requirements, and leveraging professional expertise, innovators can navigate the registration process with confidence and reap the rewards of their inventive endeavors in the dynamic landscape of Chinese innovation.
Need any assistance with patent filing in China? Contact DHH (DeHeHeng) Law Firm via iPNOTE now to get started.
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