Patents in China
In order to obtain patent protection in China, the inventor or the owner of the invention has to file a Chinese patent application. The Chinese State Intellectual Property Office (SIPO) is the government authority that receives and examines patent applications.
In China an invention patent is granted for new technical solutions or improvements to a product or process, provided that the technical solutions have a practical applicability.
An invention patent must not have been previously published overseas or in China, and must not have been used in China prior to the patent application. When compared to existing technology, the invention patent must have an advantage. ‘Previously published’ refers to whether it has been disclosed to the public through publications such as newspapers, magazines, journals, online publications etc. before the application date of the patent. If an identical invention has been published before the application date, this will destroy the ‘novelty’ (or ‘newness’) of the patent, which is a requirement for application.
Utility Model Patents
Utility Model Patents (UMs) are very similar to invention patents; however UMs only protect products with new shape or structural physical features.
UMs are not unique to China. In fact, there are more countries in the world that have a UM system than those that do not. European Union Member States with the UM system include Austria, Belgium, Denmark, Finland, Germany, Italy, and the Netherlands, among others. The USA and the UK do not have a UM system.
A common practice under the Chinese system is the parallel filing of a UM and an invention patent, followed by the abandonment of the UM once the invention patent is officially granted. This way, the applicant can benefit from the early patent protection granted by the UM, as well as the longer term protection granted by the invention patent (once eventually approved). Please note that these parallel applications must be filed on exactly the same day, and both applications must be accompanied by a declaration that a parallel filing was made. However, because the patentability requirements on invention patents and UMs are the same, if an invention patent is found to be invalid, then the corresponding UM (if it exists) will be invalid as well.
A design patent must not have been published overseas or in China, and must not have been used in China. In addition, a design patent cannot conflict with the prior rights of another person. The phrase ‘not have been used in China’ means that the product has not been publically used in China. As a general rule, if a company sells their products in China before filing for registration, this will destroy the ‘novelty’ of the patent.
An application for a design patent includes any of the following external features of a product:
The shape of a product
The pattern of a product
The shape and pattern of a product
The shape and colour of a product
The shape, pattern and colour of a product
The colour of a product alone cannot constitute the design of a product unless the change of colour can be regarded as a pattern. Colour does not include the natural colour of the raw material of the product. It is recommended that a combination of the colour of the machine, together with either the shape and/or pattern, should be applied for, in order to prevent the patent being easily invalidated after it is granted patent rights.
The applicant should as far as possible show why the external design is a 'new design'. The preliminary examiner will only consider whether the design is 'new' according to the application documents and the common sense of the average consumer. However, a correctly drafted external design patent application highlighting why the design is 'new', how it can be used by industry, and that it can be manufactured in batches, will prevent the patent being easily invalidated. If a particular feature has a practical application, rather than being used merely because it looks good, applying for an invention patent or utility model should be considered.
Once you have registered a design patent, no entity or individual can exploit your design. That means that they cannot make, offer to sell, or import a product that incorporates the patented design for production or business purposes.
Average Duration of Application/Registration Procedure, Terms & Annuity Fees
|Type||Duration of application procedure||Term|
|Invention patent||Normally granted within 3-5 years||20 years|
|Utility Model||Normally granted within 1 year||10 years|
|Design patent||Normally granted within 1 year||10 years|
Patent rights commence from the date of publication of the grant in the Patent Gazette. The duration of the application procedure and term vary depending on the type of patent applied for. And the valid term shall be from the date of filing (or the priority date if priority is claimed) subject to the payment of annuity fees.