Summary

Patent for Utility Model / Patent for Design

To the contrary, unlike the application for patent for invention which will go though the examination procedure before the grant, the patent for utility model and design will be granted if no cause for rejection was found in the preliminary examination, namely the formality examination. Usually, it will take the applicant for patent for utility model or design about 9 months to 18 months to obtain the grant. And the protection term for the patent for utility model and design is 10 years from the Chinese filing date, and the renewal fee shall be also paid annually on the anniversary day of the Chinese filing date.

         PATENTS IN CHINA

Pursuant to Article 19 of the Chinese Patent Law, any foreigner, foreign enterprise or other foreign organization having no habitual residence or business office in China applies for a patent, or has other patent matters to attend to, in China, it or he shall appoint a patent agency designated by the Patent Administration Department Under the State Council to act as his or its agent.

Generally, China grants patent protection to foreign nationals based on a government agreement or an international treaty. Jordan nationals are eligible for patent registration in China since both of the countries are signatory of the Paris Convention.

  I.   Registration Procedure

 Application for patent and utility model registration in China can be carried out via  PCT or directly filing with the home office.  Once the application designating China enters the national phase, any patent or utility model application must be filed with the Patent Office, which is located in the State Intellectual Property Office in Beijing.  The Office accepts the filing of documents by means of facsimile.

Normally, the Patent Office publishes its preliminary approval of the application within 18 months from the filing date.  An invention patent application is subject to substantive review upon the request of the applicant within 3 years from the date of publication.  There is no substantive review for utility model and design. The approved patent application will be published for 6-month opposition.  If no  opposition is filed within that period, the application will mature into registration.

II.                Term of Protection

        Patent rights commence from the date of publication in the Patent Gazette.  The term varies depending on the type of patent.

  Invention Patent - 20 years from the filing date.

  Utility Model Patent - 10 years from the filing date.

  Design Patent - 10 years from the filing date.

III.             Types of Patents

        Invention Patent - inventions that show "novelty" and are not obvious, that have been developed to the point that they can be utilized in industry.

  New Utility Model Patent - creations or improvements relating to the form, construction, or fitting of an object.  In general, the technical requirements are not as high as for an invention patent.

  New Design Patent - original designs relating to the shape, pattern, color or a combination thereof of an object.

IV.              Conditions Barring Patentability

        If any of the following conditions applies, a patent registration will be denied:

Invention and Utility Model

  Before filing, an invention or a utility model was published anywhere in the world or put to public use in China.

  A patent has already been granted to the same invention or utility model, and that application was filed earlier than the current application.

  An invention or a new utility model was displayed in an exhibition; provided that the exhibition was not sponsored or approved by the government, and no patent application was filed for the invention or utility model within 6 months from the opening date of the government-sponsored or approved exhibition.

  An invention or a utility model uses conventional techniques and knowledge available before the application was filed and is thus obvious.

New Design

  Before filing for patent registration, the same or a similar design was published anywhere in the world or publicly put to use in China.

  A patent has been previously granted for the same or a similar new design, which was filed earlier than the current application.

  A design which is obvious to people familiar with the relevant field.

V.                 Unpatentable Items

         The following items are unpatentable in China:

  New varieties of plants and animals, not including the breeding processes for new varieties of plants.

  Diagnostic, therapeutic or surgical methods for treating diseases of the human or animal body.

  Scientific principles or mathematical methods.

  Rules or methods for playing games or sports.

  Other methods or schemes which can be carried out only by means of reasoning and human memory.

  Substances obtained by means of nuclear transformation.

  An article that is detrimental to public order, good morals, or public health.

  An article the shape or the design of which is identical or similar to the party, national or military flag, the national emblem, the government medal.

VI.              Actions to Prevent or Revoke Registration of Patents

  Oppositions - Filed during a patent application's six-month opposition period, usually on the grounds that the approved patent is not novel or is similar to another registered .patent.

  Invalidations  - Filed after a patent has been granted registration, usually on grounds 1) non-obviousness, 2) similarity to another registered patent. 3) lack of applicability by a person skilled in the same field of technology, and 4) claim(s) beyond the scope of specification.

VII.           Paths of Appeal

        In the event that the Patent Office returns an unfavorable decision on an application, or an opposition or cancellation action, a party may apply for relief from the Patent Reexamination Board.  In the case of invention patents, appeal from the Board may be made to the Beijing First Intermediate Court, and may then be appealed through the court system.  There is no judicial appeal available for design or utility model patents.

It usually takes 2 - 3 years for a patent application to be granted in

China.  The State Intellectual Property Office (SIPO) is presently trying to

reduce the time taken to grant a patent after an application has been filed.

  The first annuity payment is to be paid when the decision to grant the

application is made by the patent office.  After that, the annuity fee must

be paid within one month of the application's Chinese national phase entry

date each year.

Unpatentable Subject Matter

According to Article 25 of the Chinese Patent Law, for any of the following, no patent right shall be granted:

       scientific discoveries;

       rules and methods for mental activities;

       methods for the diagnosis or for the treatment of diseases;

       animal and plant varieties;

       substances obtained by means of nuclear transformation

Duration of Patent Right

The duration of patent right for invention is twenty years the duration of patent right for utility models or for designs is ten years, counted from the date of filing.

Right of Prioritv

An applicant may claim the right of priority in accordance with the Paris Convention or on the basis of the principle of mutual recognition of the priority.  The priority term for patent for invention or utility model is twelve months, and for design is six months.

Domestic priority may also be claimed within 12 months for applications for invention or utility model first filed in China.

Information Required in an Order Letter

  Type of the application, i.e., a patent for invention, for utility model or for design, shall be clearly indicated.

  Applicant's and inventor's full name, address and nationality.  If the applicant or the inventor come from countries or regions like Japan, Korea, Hong Kong and Taiwan etc.  Where Chinese characters are used in names, please provide the Chinese characters of the applicant's and inventor's names.

  Where priority is to be claimed, the filing date and filing number of each earlier application, and the country in which the application was filed shall be provided.

  Applicant's specific instructions with regard to the proposed filing date of the application in China and any special requirements concerning the application.

Application Documents Required and Specific Requirements for an Application for Patent for Invention

  Application Documents: description, claims, abstract and drawings (if any) of the application.

       Request for Substantive Examination:

In the case of an application for patent for invention, the applicant shall request substantive examination at any time within three years of the date of filing in China or the date or priority (if priority is claimed).

         Deposit of Samples of Micro-Organisms

Where an application relates to a new micro-organism, a micro-organism process or a product thereof and involves the use of a micro-organism which is not available to the public, the applicant shall, before the date of filing, or, at the latest, on the date of filing, deposit a sample of the micro-organism with a depository institution designated by the Chinese Patent Office or an international depository authority under the Budapest Treaty, and submit at the time of filing, or, at the latest, within three months of the filing date, a receipt of the deposit and the proof of viability from the depository institution or the international depository authority.

With respect to the micro-organisms which are commercially available at home and abroad, catalogues of such micro-organisms should be submitted within three months of the date of filing in China.

Requirements

  Filing a Utility Model in China:

  For the preparation of filing documents of a direct national filing

(Utility model) the following documents are needed:

1.      A letter of instruction,

2.      A Power of Attorney executed by the applicant (maybe 'late-submitted' within 2 months from the Chinese filing date),

3.      Specification (description + claims + abstract + drawings),

4.      The certified priority document and form of assignment (the assignment will be necessary if the certified priority document indicates that the applicant is not the same as in the Chinese application) As there is no substantive examination procedure for utility model either, it usually takes 8-12 months for the same to be granted in China.

Application Documents Required and Specific Requirements for an Application for Patent for Utility Model

·         Application Documents: description, claims, abstract and drawings of the application.

·         Methods shall not be claimed in any application for a patent for utility model.

    For Patent for Invention or Utility Model Applications

-   Your order letter indicating the bibliographic information about the application to be filed, including name(s) and address(es) of the applicant(s), the name(s) of the inventor(s), the due date to file the application, the detailed priority data (if any) i.e. the date, the country and the serial number of the priority to be claimed;

-   A copy of specification, claims, abstract and (if any) drawings;

-   Power of Attorney originally executed by the applicant(s), which can be filed later within a term given by the examiner in his notice for missing document after the application is filed.

-   A certified copy of priority documents (if any priority is to be claimed), which must be filed within three months from the Chinese filing date.