Application for a Patent in China

On 2019 October 16, The World Intellectual Property Organization (“WIPO”) published The World Intellectual Property Indicators 2019, which demonstrated that in 2018, innovators across the world filed 3.3 million patent applications in 2018. The China National Intellectual Property Administration (“CNIPA”) received 1.5 million patent applications, which amounts to almost half of the world’s patent applications.

Every company owning patents and doing business in China, regardless of whether it is based domestically or abroad, is strongly advised to use the Chinese patent system if it wishes to create long-term value, finding an investor for their patent or licensing their patent in the future.

In China, the patent law covers three distinct areas, which are Invention Patent, Utility Model Patent and Design Patent. The requirements and process for each application are different. According to The Chinese Patent Law, the Invention and Utility Model shall possess novelty, creativity and practical applicability, in terms of Design, such applications only need to possess a novelty feature.

To apply for a patent, the first thing that any company shall do is a patent retrieval, in order to examine whether the patent they want to apply for has already been registered by other parties. Since the application process itself is complicated and costs a considerable amount of time and money, it would be wise to carry out this preliminary step in order to avoid  applying for an already registered patent, only waiting to be rejected by CNIPA and ultimately achieving nothing.

If, after retrieval, the company confirms that there are no other similar patents registered, it is time to prepare the relevant documents required by CNIPA. Generally, a patent application will contain a description, figures/drawings, “claims” and an abstract. “Claims” are the part of patent application related to what the invention is and what it does. “Claims” define the legal scope of a patent and specify what can be protected by patent law.

Since patent applications are processed in China, foreign applicants shall note that all the patent documents drafted in a foreign language must be translated precisely into Chinese. Otherwise, an inaccurate translation would render the patent, even if granted, vulnerable to invalidation actions and difficulty in enforcement.

Utility Model and Design Patents will undergo only preliminary examination for administrative accuracy, while invention patents must undergo both preliminary and substantive examinations. If the patent application is successfully examined, then the applicant will be granted, and patent rights and the application will be published in the relevant Patent Gazette. Once the patent is granted, when facing patent infringements, the company will have the right to take either a civil action or an administrative action in order to protect and enforce their patent rights.

The duration of the application procedure and term vary depending on the type of patent applied for. Normally, an Invention Patent will be granted within 3 to 5 years and valid for 20 years from the date of application; while Utility Model and Design Patents will be granted within 1 year and valid for ten years. As a result, applying simultaneously for a Utility Model Patent and Invention Patent provides a quicker way of securing a company’s patent rights.

As China has recently shown a particular encouragement in regards to innovation, companies should seek out opportunities related to technology and innovation. However, companies need to take care of their rights and interests related to patents in case of infringement, therefore, patent protection in China is a crucial requirement in the modern business environment.