China National Intellectual Property Administration Patent

1. What are the types of patent applications?

There are three types of patent applications, namely invention, utility model, and design. If there is a new technical solution relating to a product, a process, or an improvement thereof, an invention may be filed. If there is a new technical solution relating to a product's shape, structure, or a combination thereof, which is fit for practical use, an utility model may be filed. If there is a new design of the shape, pattern, or a combination thereof, as well as a combination of the color, shape and pattern of the entirety or part of a product, which creates an aesthetic feeling and is fit for industrial application, a design may be filed.

2. What documents are required for filing a patent application?

(1) Where an invention is filed, the documents shall include: a request letter for the invention, an abstract of the description (with drawings of the abstract if necessary), one or more claims and a description (with drawings of the description if necessary). 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 e-application, a copy of the said sequence listing in computer-readable form shall also be submitted. For a paper application, a sequence listing with separately numbered pages and a copy in computer-readable form carrying the same content of the said sequence listing shall be submitted. 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.

(2) Where an application for utility model is filed, the documents shall include: a request letter for the utility model, an abstract of the description (with drawings of the abstract if necessary), one or more claims, a description and drawings of the description.

(3) Where an application for design is filed, the documents shall include: a request letter for the design, drawings or photos (where an applicant seeks protection of colors, drawings or photographs in color shall be submitted) and a brief explanation of the design.

3. What should be noticed to appoint a patent agency?

To apply for a patent in China, an entity or individual from Chinese mainland may appoint a legally formed patent agency to act on its behalf, or apply by itself.

Where a foreigner, a foreign enterprise or any other foreign organization that has no habitual domicile or business office in Chinese mainland intends to apply for a patent solely or apply for a patent as a representative in China, it shall appoint a legally formed patent agency to act on its behalf.

Where a applicant from the regions of Hong Kong, Macau or Taiwan that has no habitual domicile or business office in Chinese mainland intends to apply for a patent solely or apply for a patent as a representative in China, it shall appoint a legally formed patent agency to act on its behalf.

The China National Intellectual Property Administration (CNIPA) has approved legally formed patent agencies to be established based on the Regulations on Patent Commissioning. The list of the approved agencies is available on the CNIPA's website.

4. How many phases does the patent examination proceeding have?

Examination proceeding for inventions includes five stages, namely receiving, preliminary examination, publication, substantive examination, and grant. Examination proceeding for utility model or design includes three stages, namely receiving, preliminary examination, and grant.

5. How to maintain the patent right?

After a patent is granted, the patentee shall pay the annual fee for the following year before the expiration of the previous year. If the annual fee is not paid or not paid in full, the patentee may pay the annual fee within six months from the date of expiration of the fee and pay the surcharge for the time exceeded. If the annual fee and the surcharge are not paid at the end of the payment period or if the amount of payment is insufficient, the patent right shall be terminated from the date of expiration of the previous year.

6. What are the causes for the termination of patent right?

The reasons for termination of a patent right can be:

(1) Terminate after expiration of its term: 20 years for protection term of invention patent, 10 years for protection term of utility model, and 15 years for protection term of design.

(2) Terminate for not paying fees: Where an applicant delays to pay the annual fee and surcharge or pays insufficiently as of the expiration of the grace period, the patent right shall be terminated from the date of expiration of the previous year.

(3) Patentee spontaneously abandons the patent right.

7. What is recording of patent licensing agreements?

Recording of patent licensing agreement refers to the act of patent administrative department or its designated unit to record and announce the licensing agreement which has been concluded and taken effect.

The relevant party (licensor and licensee) shall go to the designated unit of the CNIPA to record the licensing agreement relating to the patent within three months of signing the agreement, according to the implementing rules of the Patent Law and the Measures for Recording Patent Licensing Agreements (also known as No.62 Office Order of CNIPA).

8. Where can the recording of patent licensing agreements be done?

Where both parties of the patent licensing agreements are Chinese entities or individuals, the party(s) may go to one of the local branches established by CNIPA's Patent Office for recording, or may go to Patent Matters Service Division of Preliminary Examination and Flow Management Department of the Patent Office of the CNIPA for recording.

Where any party of the patent licensing agreement is a foreign national, foreign enterprise or any other foreign organization, or any party is from China's Hong Kong, Macau or Taiwan region, the party(s) shall go to Patent Matters Service Division of Preliminary Examination and Flow Management Department of the Patent Office of the CNIPA for recording.

The party(s) may submit the relevant documents for recording of the patent licensing agreement on-site, by post or online.

On-site submission address: Matters Service Window, Service Hall, Patent Office, China National Intellectual Property Administration, No. 6 Xituchenglu, Jimenqiao, Haidian District, Beijing

Postal address: Patent Matters Service Division of Preliminary Examination and Flow Management Department, Patent Office, China National Intellectual Property Administration, No. 6 Xituchenglu, Jimenqiao, Haidian District, Beijing. Postal code: 100088; Tel: 010-6235-6655; Fax: 010-6208-5860. The party(s) shall write "For agreement recording" on the envelope.

The links of the addresses and contact information of the local branches established by the Patent Office of the CNIPA are available on the home page of the CNIPA website: http://www.cnipa.gov.cn/.

9. What formalities are required for PCT international applications entering Chinese national phase?

If the applicant wishes to obtain patent protection in China, it shall go through the procedure of entering the national phase in China within 30 months from the priority date. If the procedure is not carried out within that period, the procedure may be carried out within 32 months from the priority date after the payment of a surcharge for late entry into the national phase, i.e., by submitting the required documents and paying the required fees.

(1) Required documents:

1) Statement for international applications entering Chinese national phase (standard form formulated by CNIPA).

2) Chinese translation of the original description.

3) Chinese translation of the original claims.

4) Copy of the original drawings. If there are texts in the drawings, the texts shall be replaced by the corresponding text in Chinese.

5) Chinese translation of the abstract and copy of the drawing of the abstract.

For PCT international applications internationally published in Chinese, only a statement for entering Chinese national phase, internationally published copies of the abstract and the drawing of the abstract (if applicable) are required.

(2) Required fees: filing fee, additional filing fee, application publication fee, surcharge for late entry into the national phase (if applicable), fee for priority claim (if applicable). See the fee table for the amount of said fees and other fees.

Note: When handling formalities for entering, applicants may use the PCT international application number to pay relevant fees. After acquiring a national application number, applicants shall use the national application number to pay relevant fees.

(3) Where any foreign individual, enterprise or other type of organization that has no habitual residence or business office in Chinese mainland intends to apply for a patent or handle other patent matters in China, it shall appoint a legally formed patent agency to act on its behalf.

10. What forms can be adopted for application documents submitted when PCT international applications enter Chinese national phase?

Applicants may submit the application documents in e-form or in paper form. For paper form submission, applicants may submit to PCT Group, Receiving Division, Patent Office of the China National Intellectual Property Administration via post or on-site.

11. What are the advantages of PPH?

● Accelerated examination

Examination of PPH applications is accelerated, leading to more prompt receiving of the office action.

● Cost saving

Compared to regular applications, the fewer times the applicants of PPH applications respond to office actions, the less filing cost will be paid, according to statistics.

● Higher grant rate

Compared to regular applications, PPH applications are more likely to be granted, according to statistics.

12. What are the types of PPH?

Bilateral regular PPH request

An applicant files a PPH request to a second filing office (OSF) by using the national work results of the first filing office (OFF) under the bilateral framework.

Regular PPH request under IP5 framework

Both the later examination (OLE) application which PPH is requested and the earlier examination office (OEE) application(s) forming the basis of the PPH request shall have the same earliest date (whether this be a priority date or a filing date) under IP5 framework. It expands the metric conditions based on the regular PPH, for example,OLE application is an application which is the basis of a valid priority claim for the OEE application(s), or OLE application is an application which shares a common priority claim with the OEE application(s).

PCT-PPH request

An applicant files a PPH request to a later examination office (OLE) by using the latest work results of the PCT international phase from the earlier examination office (OEE) .

13. What is a request for reexamination?

Rejection decisions subject to the reexamination include decisions to reject patent applications both in preliminary and substantive examination proceedings. A request for reexamination shall not be accepted if it is not directed to a decision of rejection by the Patent Office.

14. In how many ways a request for reexamination can be examined?

For a request for reexamination, the panel may conduct examination in written form, by oral proceedings, or in both ways.

The panel shall issue Notification of Reexamination (including Notification of Oral Proceedings for Request for Reexamination) or take oral proceedings in any of the following circumstances:

(1) where the decision of reexamination is intended to uphold the rejection decision.;

(2) where the decision of rejection can be revoked on the condition that the petitioner make amendments to the application document in accordance with the relevant provisions of the Patent Law, its Implementing Regulations and Examination Guidelines;

(3)where further evidence or explanation is required to be submitted by the petitioner;

(4) where new grounds or evidence that have not been provided in the decision of rejection need to be introduced.

In the reexamination process, the petitioner may request for oral proceedings in written form and explain the reasons thereof to the Reexamination and Invalidation Department.

The petitioner may request for oral proceedings based on the following reasons:

1) there is a need to explain the facts or the causes to the panel face-to-face;

2) there is a need to demonstrate a material object.

Where the petitioner submits an oral proceedings request, the panel shall decide whether to take oral proceedings in accordance with the needs of the case.

15. What can the petitioner do if not satisfied with the review decision?

The petitioner may file a lawsuit against the review decision made by the Patent Office of the China National Intellectual Property Administration within three months of receipt of a notice of the decision to Beijing Intellectual Property Court.

16. What is a request to invalidate a patent?

In accordance with Article 45 of the Patent Law, as of the announcement of the granting of the patent by the patent administrative department of the State Council, any entity or individual considers that the granting of the said patent does not conform to the relevant provisions of this Law, may request the patent administrative department to invalidate the patent right.

The petitioner (person requesting for invalidation) shall be eligible to institute a civil action. The object of a request for invalidation shall be the granted patent, including those that have been terminated, abandoned (except those abandoned as of the application date) or partially invalidated.

17. What is the scope, causes and evidence for a request for invalidation?

(1) The scope to be requested for invalidation shall be clearly indicated in the request.

(2) The causes for invalidation shall be limited to those prescribed in Rule 65.2 only, and the relevant specific provisions of the Patent Law and its implementing Regulations shall be indicated as independent causes.

(3) A request to invalidate a patent shall not be accepted if the causes and evidence are the same as those of a previous request to invalidate the same patent that has been decided by the Reexamination and Invalidation Department, unless the causes or evidence has not been taken into consideration in the previous decision due to the reasons including time limit.

(4) For a request for invalidating a patent for design based on the causes that the patent for design is in conflict with a legitimate right of another individual, which was acquired prior to the filing date of the patent, it shall not be accepeted if no evidence is submitted to prove such conflict of rights.

(5) The petitioner shall explain the causes for invalidation concretely, making reference to all the evidence if applicable.

18. How can causes for invalidation be added?

Where the petitioner raises additional causes for invalidation within one month from the date of submitting the request, he shall explain the causes concretely within this period; otherwise it will not be taken into account.

Where the petitioner raises additional causes adds for invalidation after one month from the date of submitting the request, generally the Reexamination and Invalidation Department will not take them into account, unless in any of the following circumstances:

(1) for claims amended by any way except the way of deletion by the patentee, addition of causes for invalidation is made within the time limit specified by the Reexamination and Invalidation Department, and the added causes are explained concretely within the time limit;

(2) the addition is to change the causes for invalidation which are obviously inappropriate to the evidence submitted.

19. How can the parties concerned in the invalidation proceedings dispose their rights?

The petitioner may renounce part or all of the causes and evidence he has raised for the request for invalidation. For the causes or evidence renounced by the petitioner, usually the Reexamination and Invalidation Department will not investigate or examine them any more.

In the invalidation procedure, the party concerned is entitled to compromise with the opposite party at his own wish. In case where both the petitioner and the patentee have expressed their willingness to compromise, the Reexamination and Invalidation department may give both parties a certain period of time to negotiate, and temporarily refrain from making an examination decision until requested by either party or the time limit specified by the Reexamination and Invalidation Department.

In the invalidation procedure, if, in response to the request for invalidation, the patentee narrowed the extent of protection of the patent right on his own initiative and the corresponding amended text was accepted by the Reexamination and Invalidation Department, then it shall be deemed that the patentee admitted a larger extent of protection did not conform to the relevant provisions of the Patent Law and its Implementing regulations and acknowledged the request for invalidation concerning the claim, and thus the burden of proof on the petitioner for invalidation of said claim is exempted.

In the invalidation procedure, if the patentee renounced by declaration the dependent claims, it shall be deemed that the patentee admitted that the claims did not conform to the relevant provisions of the Patent Law and its Implementing regulations, and acknowledged the request for invalidation concerning the claims, and thus the burden of proof on the petitioner for invalidation of said claim is exempted.

20. How is a determination of oral proceedings to be made?

The Reexamination and Invalidation Department may decide whether to take oral proceedings in accordance with the request of the party(ies) or the needs of the case. Oral proceedings may be taken place offline, online, or in both.

In the invalidation proceedings, the party(ies) may request oral proceedings to the Reexamination and Invalidation Department in written form and explain the reasons. The party(ies) may request oral proceedings based on any of the following reasons:

(1) One of the parties requests face-to-face cross-examination of evidence and debate with the opposite party;

(2) there is a need to explain the facts to the panel;

(3) there is a need to demonstrate a material object;

(4) there is a need to call a witness giving evidential statement in testimony.

For cases of request for invalidation for which no oral proceedings has been taken, where the Reexamination and Invalidation Department receives from the party concerned for oral proceedings in written form based on one of the reasons mentioned above, the panel shall decide to take oral proceedings.

21. What can the party(ies) do if not satisfied with the invalidation decision?

The party(ies) may file a lawsuit against the invalidation decision made by the Reexamination and Invalidation Department to Beijing Intellectual Property Court within three months of the receipt of the notice of the decision.

22. What is the legal basis for requesting a reexamination of rejected patent applications?

In accordance with Article 41 of the Patent Law, a patent applicant may file a request to the patent administrative department of the State Council for a review of the decision of the patent administrative department of the State Council to reject its application within three months of receipt of a notice of the decision. After review, the said department shall make a decision, and notify the patent applicant.

The patent applicant may file a lawsuit against the review decision made by the patent administrative department of the State Council within three months of receipt of a notice of the decision.

23. What are the requirements for a request for reexamination?

Applications for a request for reexamination shall meet the following requirements:

1. If not satisfied with the decision of rejection, the patent applicant may file a request for reexamination to the Patent Office of the China National Intellectual Property Administration;

2. The applicant of a rejected application may file a request for reexamination. When a rejected application has two or more applicants, the petitioner for reexamination shall include all the applicants.

3. The applicant may file a request for reexamination within three months from the date of receipt of the decision of rejection made by the Patent Office. Where the petitioner misses the said time limit due to force majeure or any other justified reason, he may file a request for restoration of right as provided in Rule 6 of the implementing Regulations of the Patent Law.

24. What are the types of Examination Decisions on Requests for Reexamination?

There are three types of examination decisions on requests for reexamination:

(1) a request for reexamination is not allowed, and the decision of rejection is upheld.

(2) a request for reexamination is allowed, and the decision of rejection is revoked.

(3) Where an application document has been amended and the defects indicated in the decision of rejection has been overcome, the decision of rejection is revoked on the basis of the amended text.

Guide for Request for Reexamination of Rejected Applications of Integrated Circuit Layout Design (Q&A)

25. What is explained in Operating Manual for Remote Trial System of the Reexamination and Invalidation Department (App Version)?

I. Pre-trial

1. Download link of the APP is delivered through text message

1.1 Trial date is delivered through text message along with the link to the remote online oral proceedings

2. Log in

Account number, password or ID number delivered via text message

2.1 Method 1: Account No. + face recognition: click to verify (Operating Manual at the bottom left)

2.2 Method 2: Account No. + password + face recognition (sent via text message): (Operating Manual at the bottom left)

3. Pre-trial notification

3.1 Notification of trial disciplines

After reading, tick (√) under "I have read"

4. Face recognition

4.1 Perform face recognition; take a photo while ensuring good internet connection and lighting

5. Electronic signature

5.1 Sign and click 'OK' to upload

6. Wait to enter into trial session

6.1 After identity verification by clerk, wait to enter into trial session. If there is new evidence, upload it in advance.

II. Trial in Progress

1. Enter into trial session

1.1 Enter into trial session; please check if the microphone is working normally

2. Upload evidence

2.1 If there is a need to upload evidence during trial, click 'Upload Evidence' at bottom

2.2 Name the evidence, and select the evidence to upload

2.3 After completion of the upload, click 'Back' to return to trial video.

3. Check evidence

3.1 Click the floating bar under the video: check evidence

4. Confirm trial record

4.1 Select 'Confirm Trial Record' at bottom

4.2 After verifying the record, click 'OK' and sign

III. End of Trial session

Exit trial and close the app

26. What is explained in Operating Manual for Remote Trial System of the Reexamination and Invalidation Department (PC Version for concerned party)?

I. Pre-trial

1. Download link of the PC version is delivered through text message

1.1 Copy the web page address, then paste (or manually input) it on PC

1.2 Download the software and install it

Google Chrome browser is recommended

Select 'Yes' for all prompts during installation

2. Log in with relevant account

2.1 Before running the program, please close 360 anti-virus software

2.2 Use administrator privilege to run the program

2.3 Input information as required

2.4 Log in to the system of the Reexamination and Invalidation Department

2.5 Click 'Switch' to switch login methods (account number and password)

3. Wait for trial to begin

No action required in current state and please wait.

4. Pre-trial notification

4.1 Please read 'Trial Disciplines' and tick (√)

4.2 Click 'Understand'

5. Perform face recognition

5.1 Automatic follow up after reading 'Trial Disciplines'

5.2 Please take a photo as required

5.3 Face recognition is automatic. No action is required.

6. Signature

6.1 Automatic follow up after completion of face recognition

6.2 Please sign at the designated area

6.3 Click 'Confirm Upload' to upload signature by system.

7. After verification, wait for trial session to begin

7.1 Personal information will be verified by judge, and 'Verification Passed' will display if successful

7.2 Please wait. Judge will announce the begin of the trial. No action is required.

8. Enter into trial session

8.1 Please check if the microphone is on

8.2 Please select 'Meeting Mode' according to the number of trial windows

8.3 Please adjust hardware settings before trial formally begins

8.4 'Trial Video' is used to return 'Case Details', 'Evidence' and 'Trial Record' to trial mode

9. Evidence

9.1 Click 'Evidence' to enter into the evidence page

9.2 Click 'Trial Video'

10.2 Click 'Trial Video' to return to trial status

10.3 After trial record is verified, click 'Confirm Signature', your signature will be integrated into the trial record (a signature on each page)

11. Share

11.1 Click 'Share' to switch to PC's desktop

11.2 Share Tool Bar

12. Close program

12.1 Click 'Exit Trial'

12.2 Click 'Close' at top right of the screen to exit the program

12.3 If you have exited the trial without closing the system, you may reenter by clicking 'Enter Trial'

13. Log in again

If the trial program shuts down abnormally, open the program again and enter relevant information, then enter the trial session via face recognition

Refer to 2-5-13 for specific procedures