Yan Wang, Lili Wu and Rui Luo of Han Kun Law Offices answer key questions relating to Chinese patent law, including those on acquiring and renewing patents, infringement and legislation
There are three types of patents in China: invention patents, utility model patents and design patents. For the first filing, an applicant can file an application with the National Intellectual Property Administration (CNIPA) after it is drafted. Utility model applications and design applications are usually granted within eight months because there is no substantive examination.
For an invention application, it usually takes around two years to obtain grant because a prior art search and substantive examination are needed. In addition, it is also possible to file a new application through PCT national entry or through the Paris Convention route. For PCT national entry, an application can enter into China within 30 months from the earliest priority date and can have an additional two months after paying the later entry fee. For a new application through the Paris Convention route, the applicant can file the invention application and utility model application within one year or file a design application within six months.
An invention patent can be protected for 20 years; a utility model patent and a design patent can be protected for 10 years. According to the fourth amendment of the drafted Patent Law, the protection period for a design patent is expected to be extended to 15 years.
A patent should be renewed once a year during the life of the patent in China. The patentee can pay by himself through transfer to the account of the CNIPA, or pay online, or through an agent.
In order to adapt patent examinations to the fast development and wide application of computer-related technologies such as artificial intelligence (AI) and big data etc., CNIPA announced a new amendment to the Guidelines for Patent Examination regarding computer-implemented inventions, which came into effect on February 1 2020.
The amended Guidelines for Patent Examination clarify the examination rules for examining invention patent applications involving algorithms and business rules, and also provide examples to show how the examination rules should be applied in practice. These examination rules and examples give patent applicants clearer guidance on what can be patented and how to draft a better patent application for computer-implemented inventions.
Patent infringement can be established based on the all elements rule in China. That is, the allegedly infringing technical solution should fall within the protection scope of the invention or utility model in order to establish infringement. It will fall within the protection scope if it includes technical features identical or equivalent to each of all the technical features in an asserted claim of the invention or utility model.
An allegedly infringing design product should fall within the protection scope of the design patent at issue in order to establish infringement. It will fall within the protection scope, if the design product, in the same category as or a similar category to the patented design product, adopts the industrial design in the same or a similar way to the patented design.
There are two ways for patent holders to deal with infringement, i.e. to file civil litigation to stop the infringement and acquire damages as compensation or to request the administrative authority for patent affairs to stop the infringement. The key difference is that the patent holder cannot claim monetary damages in administrative proceedings, but can do so in court litigation.
Patent la in China is govern by three major pieces of legislation, namely the PRC Patent Law (2008), theImplementing Regulations of the PRC Patent Law (2010), and several judicial interpretations regarding patent law matters. The PRC Patent Law (2008) is promulgated by the National People’s Congress of the PRC, which is the foundation of all patent-related legislation in China.
The Implementing Regulations of the PRC Patent Law (2010) are administrative regulations promulgated by the State Council of the PRC, which further elaborate on the detailed rules for the implementation of the Patent Law. The various judicial interpretations issued by the Supreme People’s Court also constitute a critical part of patent law legislation. They provide guidance on judicial practice relating to patent law in China. In addition to the above, the Guidelines for Patent Examination (2020) published by the China National IP Administration also plays a significant part in influencing the prosecution of patent applications and invalidation of patents in China.
Article 2 of the patent law stipulates what inventions can be covered by patents, i.e. invention patents, utility model patents and design patents. The term “invention” refers to any new technical solution relating to a product, a process or an improvement thereof. The term “utility model” refers to any new technical solution relating to a product’s shape, structure, or a combination thereof, which is fit for practical use. The term “design” refers to any new design of a product’s shape, pattern or a combination thereof, as well as the combination of the colour and the shape or pattern of a product, which creates an aesthetic feeling and is fit for industrial application.
Anyone including the patentee himself can request the CNIPA to invalidate a granted patent. All the legal grounds for a patent grant apply in a patent invalidation procedure. Among others, the main legal grounds can be, for example, a patent is not clear, insufficient disclosure, lack of support, lack of essential technical features, adding new matter during the prosecution, lack of novelty, lack of inventiveness, double patenting etc.
Regarding the decisions made by the CNIPA, both the invalidation petitioner and the patentee can appeal to the Beijing IP Court for review, and the judgment made by Beijing IP Court can be appealed further to the IP court in the Supreme People’s Court for second instance.
For an invention or utility model application, it must be novel and inventive over prior art. In addition, the specification of the application should describe the invention intended for protection sufficiently. The claims should define the invention to be protected clearly by including the features for implementing the invention. As for novelty, China has an absolute novelty bar and any public disclosure around the world would affect the patentability of the invention. Therefore an applicant must first file an application before any disclosure.
Article 25 of the patent law stipulated what is not patentable subject matter. Subject matter that cannot be patented includes 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; and designs which are used primarily for the identification of pattern, colour or the combination of the two on printed flat works.
Regarding rules and methods for mental activities, pure algorithms or business rules are not patent eligible. However, technical elements can render an algorithm or business-related invention patentable. Before filing a patent application in China, please make sure to describe technical elements in your description and claims. For example, technical elements can include the technical field (e.g. image processing, industrial control, wireless communications) to which the algorithm is applied, how the algorithm is applied in a technical field, or how the business rules can be implemented by specific technical means, etc.
The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, any other of its practitioners, its clients, or any of its or their respective affiliates. This article is for general information purposes only and is not intended to be and should not be taken as legal advice. Please contact the author(s) if you have any questions about this article.
Mr Yan Wang is chair of the IP and litigation departments. He focuses on contentious IP law in China.
Mr Wang is highly regarded for his proven track record handling complex disputes, in particular cases involving PR/GR-related crisis management situations. His winning strategy repeatedly proves to be invaluable to numerous Fortune Global 500 companies with cross-border disputes.
Throughout the years, Mr Wang has worked on a variety of disputes connected to patents, trademarks, copyright, trade secrets, data rights, standard-related IP issues, and competition law. In terms of forums, he has represented clients in numerous Chinese courts including the Supreme People's Court, the Chinese State Intellectual Property Office, the Chinese Trademark Office, and many other Chinese administrative agencies such as SAMR and CCA. His work covers a vast spectrum of fields such as telecommunications, semiconductors, computer software, electronics, cryptology, chemistry, petro chemistry, medical devices, and biological sciences.
Mr Wang is licensed in both China and the US (New York and DC).
Ms Wu focuses on patent portfolio management and patent enforcement. She has extensive experience in strategically managing patent portfolios for multinational clients to help clients increase the value of their IP assets. She has handled many patent invalidation and infringement cases before courts of different levels up to the Supreme People’s Court. Several court cases that Ms Wu has handled and led on been selected as key cases by the Supreme People’s Court and the Beijing High Court. Her experience spans various technology industries including electronics, the internet, telecommunications, information technology, automobiles, medical devices, manufacturing and green energy.
Ms Wu is active in international associations where she leads on and participates in the study of legal issues and drafting of reports. She frequently speaks at different international conferences. Ms Wu has been recognised as a leading lawyer in intellectual property law in China by Chambers & Partners for many years. She was ranked as a Patent Star by Managing Intellectual Property in 2017-2020.
Before joining Han Kun, Ms Wu practised at CCPIT Patent and Trademark Law Office for 21 years.
Mr Rui Luo’s practice focuses on IP litigation and IP-related anti-monopoly dispute resolution. He has particular expertise in representing multinational clients in complex and high-stakes IP-related disputes in China.
Mr Luo is a veteran litigator with extensive experience of all types of IP-related disputes, including those connected to patents, trademarks, copyright, trade secrets, competition law, and anti-monopoly law. In more than 10 years of practice, Mr Luo has represented clients in IP disputes before all key IP courts in China. With his deep insight into China’s IP protection system, Mr Luo has helped his clients win many landmark cases before the Supreme People’s Court, Beijing High People’s Court, Guangdong High People’s Court, and Beijing IP Court. A number of these cases have been selected as guideline cases by the Supreme People’s Court, Beijing High People’s Court, and Beijing IP Court.
Mr Luo also has vast experience of patent invalidation proceedings before the Patent Reexamination Board of the National Intellectual Property Administration. Leveraging his technical educational background, Mr Luo has represented his clients in many high-stakes patent invalidation proceedings related to telecommunication and semiconductor technologies. Mr Luo is particularly experienced in coordinating patent invalidation proceedings with related infringement actions to maximise his clients’ advantages and efficiently resolve complex patent disputes.
Before joining Han Kun in 2015, Mr Luo practised Chinese IP law for more than seven years at two other leading Chinese law firms.