Chinese patent law and practice

Posted by Baxter IP on

Chinese patent law and practice

In November 2011, Chris visited patent attorney firms in Guangzhou Baxter IP works with to learn more about Chinese patent law and practice. Here are his notes…

Chinese Invention Patents (Analogous to Australian Standard Patents):

  1. They have a 6 month grace period for disclosure of an invention at a recognised exhibition or by a 3rd party without permission
  2. After filing there are 2 opportunities for amendments to a patent specification (in addition to amending in response to an Examination Report):
    1. At the time of requesting substantive examination
    2. Within 3 months of receiving the notification that substantive exam has been entered
    3. Amendments must be within the scope of the claims (good reason to file PCT with very, very broad claims). In contrast, in Australia amendments (pre-acceptance) only need to be within the scope of the specification.
    4. No postponement of acceptance is possible
    5. It typically takes 1.5 – 2.5 years before receipt of the first Examination Report
    6. It typically takes 4 years to achieve grant in China
    7. Chinese patent renewals are annual and based on the grant date not filing date

Chinese Utility Model Patents (Analogous to Australian Innovation Patents):

  1. Can’t have an invention patent and utility model patent granted for the same thing (even if the claims are a little different) – can file both at the same time but ultimately will need to abandon one pre-grant.
  2. Chinese utility model patents last 10 years and there is still an inventive step requirement (I need to get more information on how this differs from the inventive step requirement for their invention patents – TBA)
  3. Chinese utility models cannot be used to protect processes or materials (they can only be used to protect products)

Contentious Situations:

  1. When you believe there is a patent infringement situation, you must first attempt to consult with the other party to resolve the matter and then can bring an action either before the People’s Court or the Administrative Tribunal (= Chinese Patent Office’s Hearings Office)
  2. Patent litigation must start at at least the level of the Middle People’s Court (one in each city) and can be appealed to the Higher People’s Court (one in each province). Ultimately a decision can be appealed to the Supreme Court (one in Beijing) although a case can only be appealed once.
  3. The Chinese Patent Office (SIPO) can hear invalidation and re-examination proceedings
  4. You can “jurisdiction shop” to an extent in China.. ultimately you want to bring litigation proceedings in a Beijing or Shanghai court if possible because they are the most knowledgable about patents – there are ways to do this… e.g. by luring the infringer to sell product into one of these areas

If you have any questions about Chinese law/practice please ask us. If we don’t know the answer, we can contact one of our Chinese Associate firms to find out!