Patent application in China
In China, there are three kinds of patents, inventions, utility models and designs. Patents in China are granted by the China National Intellectual Property Administration (CNIPA), which was renamed on 28 August 2018 from State Intellectual Property Office (SIPO).
“Invention” means any new technical idea about a product, a process or improvement. The validity duration time for an invention patent is 20 years, calculated from the filing date.
“Utility model” means any new technical solution relating to the shape, the structure, or their combination, of a product, which is fit for practical use. The validity of an utility model patent is 10 years.
“Design” means any new design of the shape, the outlook or their combination, or the combination of the colors with shape or outlook, of a product, which creates an aesthetic feeling and is fit for industrial application. The duration of design rights is 15 years, which is calculated from the date of filing.
China is one of the member of PCT. Foreigners can apply patent through PCT system with a National Phase Entry. On another hand, you can also apply patent as a local filing. Below are some difference you need know.
PCT National Phase
In most cases, a year is not enough time to gather investors, to test the recently developed invention your company is launching and to know exactly in which which countries the invention will have commercial applicability. With a PCT application you do not need to decide where to file specific foreign patent applications for up to 30 months from your first priority date. Even more, the PCT is a standardized process to file multiple applications in foreign countries.
If you already have an International PCT and need to enter into National Phase in China, we only required the following:
- PCT publication number,
- International Search Report,
- Translation if applies,
- Any amendments made to the PCT original filing if applies.
If you have a filed patent in any country and you need to expand its protection to China, you can proceed with a national application within 12 months from the earliest priority filing date. In general, a direct national patent application strategy is recommended if you know exactly where your target market is and probably if you want to protect your application in a few countries only.
If you need to proceed with the filing of a national application you have to consider the following requirements:
- Patent specifications in the local language (Abstract, application text, claims and drawings).
- Copy of the foreign priority including, country, filing date, title, owner and inventors if applies.
China patent office
Choosing one responsible Chinese patent office is the first step of your success for your patent application. All attorneys are running application under the CNIPA. The searching website address is http://dlgl.sipo.gov.cn/txnqueryAgencyOrg.do
One legal Chinese patent office not only can help you apply patent, but also deal with patent infringement, enforcement, protection and oppsition.
How do I choose an agent?
Now you can see below screenshot on how to search. I filter the status is live, with 5 years and located in Beijing city. Although you can see such official lists of agencies provide a starting point, the long lists 234 patent agencies, mean it is not easy to find the right one for your needs.
Here we would like to share with you some tips on searching for a China patent agent, investigating its background and checking their service, to narrow down your search and finally secure one agent.
Tip1: Consider location
Generally speaking, selecting an agency based in the same city where you plan to do the majority of your business in China will make it easier to communicate with the agency and prepare your registration documents.
With the help of CNIPA’s patent agency search engine, you can filter the list of agents to certain cities. You will have to manually look for the specific city you are interested in. With CNIPA’s database, you need to enter the city name in the ‘address’ section to filter. For most investors with no presence in China, it would be advisable to select one based in Beijing because CNIPA are located in Beijing and all application documents must be sent to the office. Beijing based agencies can arrange staff to hand deliver documents and get confirmation of acceptance on the same day, or provide faster feedback on modification if required.
Tip2: Consider business you focus
From the screenshot above, you can see many different kinds of company offer patent application services, for example, “xxx Consulting Company’” or “xxx IP Company”. Since there are many agents, it may be preferable to select an IP focused agent. From the company’s name you can gain a basic understanding of their focus, e.g. “xxx IP Agency Company” usually means they mainly do IP. If you wish to know more about the agent you can deeply search more information on site as below.
You can choose several companies to further investigate the quality and compare the price and service. Before you actively approach a potential agency, check its website to get a basic impression and check the following:
- Language – whether the agency has English website offering the information you need which basically means it can handle English requests.
- Services – whether its services/practices include patent registration, and have any introduction regarding the requirements, formalities and process for registration.
- Team members-whether the agent has professional patent lawyers in your industry, it is important for your patent application in success.
- Price – whether it publishes a price list for services. Not all agencies will publish this online and it may be necessary to contact them directly for a quotation.
- Communication-check theire site and email your concerns. A fast and kindly response show the agent is responsible and professional.
Tip3. Check agent qualification
Profession qualification – Patent agents can only obtain the profession certificate by passing the Patent Agent Qualification Examination organised by CNIPA, so please ensure patent agents have the correct qualification.
Power of Attorney – besides other required documents for patent registration, the Power of Attorney is an important document whereby you empower the agent to act on your behalf. Many agencies uploaded template Power of Attorney documents on their websites for clients to download. Those which provide a clear chart of what specific services can be entrusted is ideal, as you only need to select the items you want and therefore avoid any potential abuse of power from a vaguely composed Power of Attorney.
Successful cases- You can ask the agent to show their successful cases in the past, especially in your industry.
All of these factors will help you to compare service providers and make the best decision.
Patent application process in China
- Prepare your patent draft for us
- Filing your patent. Once you sent us your draft, we will prepare the documents for a proper patent application in the country you need
- Patent examination. It usually takes 12 months, it depends on how fast the examination starts in your preferred country
- Office action. The patent office will issue a report about your patent observations and requriements
- Patent granting. Once the patent office ended the examination and your application is accepted, your patent will be granted
- Maintenance your patent. You need pay maintenance fees every year to keep your patent in force
Before you file your patent application, you can search on EPO.org website using translation button to check if any Chinese patent similar or conflict with yours. Patent translate Chinese to English or English to Chinese.
Requirements for the Guarantee of Patent Right
Invention Patent and Utility Model Patent
In order to be granted a patent right, the invention or utility model must possess novelty, inventiveness and practical applicability.
- Novelty means that, before the date of filing, the same invention or utility model has not been publicly used to the public in China or abroad.
- Inventiveness means that, as compared with the technology existing before the date of filing, the invention has prominent substantive features and represents a notable progress and that the utility model has substantive features and represents progress.
- Practical applicability means that the invention or utility model can be made or used industrially and can produce effective results.
Any patentable design must possess novelty, it must not be identical with nor similar to any design which, before the date of filing, has been publicly disclosed inside or outside China.