Yan Wang, Lili Wu and Tao Zhang of Han Kun Law Offices answer key questions on patents in China, including the process for obtaining a patent, how to renew patents, which inventions can be protected by a patent and grounds for invalidation.
What is the procedure for obtaining a patent?
In China, there are three types of patents – inventions, utility models and designs.
Generally, invention patents are acquired through a prosecution procedure which includes filing an application, preliminary examination, publication, and substantive examination (possibly involving multiple rounds of office actions).
Applicants whose applications are rejected may file a request for reexamination with the CNIPA Reexamination and Invalidation Department (formerly the Patent Reexamination Board).Applicants can further appeal the reexamination decision to the Beijing IP Court in the first instance, and to the newly-established IP tribunal of the Supreme People's Court in the second instance.
Unlike invention patents, utility model and design patents are only subject to a preliminary examination and not a substantive examination.
How long are patents valid for?
Under current law, the duration of patent rights is 20 years for invention patents and 10 years for utility model and design patents, counted from the date of filing in China. A recently issued draft of the fourth amendment to the Patent Law extends the duration of design patent rights to 15 years, in conformity with the Hague requirement.
How do you renew patents?
The durations of patent rights are fixed as stated in answer to question 2 and are not renewable in China. Furthermore, patentees are required to pay annual fees to maintain the validity of their patents from the year of grant until expiration.
Are there any recent court decisions that patent applicants should bear in mind?
Practices and the patent system in China have developed rapidly over the years. To stay abreast of recent legal and regulatory developments, one may refer to lists of "typical" patent-related cases selected and released annually by different levels of courts. These lists include, for example, the Supreme People's Court's "10 major IP cases" and "50 typical IP cases," and the Beijing High Court's "10 typical IP cases and 10 innovative cases concerning IP protection."
There have been many notable typical cases in recent years. For example, Huawei prevailed against Samsung in a series of patent litigation lawsuits first filed in 2016, in which Huawei was awarded injunctive relief and damages totaling RMB 80 million. In the Gree v Oaks patent infringement case, Gree was awarded damages of RMB 46 million in the first instance. With higher damages awards and almost automatic injunctions, China has become a popular jurisdiction for filing patent infringement cases. As a result, companies need to build strong patent portfolios in China with comprehensive and enforceable patents, both to defend and protect their interests.
How can you establish patent infringement and how is infringement dealt with?
Patentees bear most of the burden in establishing patent infringement. The courts may shift the burden of proof to an alleged patent infringer and order the collection of evidence where the patentee shows that it has used its best efforts to collect evidence and establishes a prima facie case for infringement.
The court will arrange for the two parties to exchange exhibits and arguments, and will reach a decision on infringement after holding one or more hearings. Where claims of infringement are sustained, the court will determine appropriate injunctive relief and compensation. Under some circumstances, the court may consider preliminary injunctions to avoid irreparable harm.
Patentees in China can also enforce their patents administratively with the local IP bureaus. Administrative enforcement is a fast, efficient way to obtain injunctive relief compared to litigation, but monetary compensation is not available.
Which pieces of legislation govern patent law in China?
The Patent Law, along with its implementing rules, is the primary governing law on patents in China. Other important documents include CNIPA's Guidelines for Patent Examination and judicial interpretations, such as the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Cases. For certain specific issues, practitioners must also refer to other related legislation, such as the Regulations of the People's Republic of China on Customs Protection of Intellectual Property Rights.
CNIPA has drafted the fourth amendment to the Patent Law, which has been submitted to the State Council and is currently open for public comment. The draft amendment, in its current form, introduces several measures to strengthen patent protections and improve the enforceability of patent rights. Some of the most significant anticipated changes include an increase in damage awards for patent infringement, new rules to improve the enforceability of patent rights and to promote the marketing of patented technologies, and establishment of an open licensing system to enhance the process of exploitation of the patent.
Which inventions can be covered by patents?
Patents protect inventions and creations. In China, patentable subject matters include the invention, creation and improvement of new or practical processes, machines, products or materials. China recognises three kinds of patents: invention patents, utility model patents and design patents.
How do you invalidate a patent? What are the grounds for invalidation?
After a patent is granted, anyone may file a request for invalidation with the CNIPA Reexamination and Invalidation Department (formerly the Patent Reexamination Board). If CNIPA decides to invalidate a patent, the patentee may appeal the decision in the first instance to the Beijing IP Court and then in the second instance to the IP tribunal of the Supreme People's Court. Civil courts may not rule on the issue of patentability.
Grounds for invalidation in China are largely the same as those in other major jurisdictions, including non-eligible subject matters; lack of novelty, inventiveness and practical applicability; amendments going beyond the original disclosure; non-clarity; lack of enablement; lack of sufficient disclosure; lack of support; double patenting etc.
What are the requirements for a patent?
For invention and utility model patents, the subject matter must be novel, inventive and practical:
For design patents, the subject matter is required, prior to the filing date, to be different from publicly published or domestically used designs in domestic and foreign publications, and must not conflict with the legal rights previously obtained by others.
In addition, a patent is not valid if it has any of the defects summarised above in answer to question 8.
Which inventions cannot be patented?
The following subject matters are not patentable according to the Patent Law: 1) scientific discoveries; 2) rules and methods for mental activities; 3) methods for the diagnosis or treatment of diseases; 4) animal and plant varieties; and 5) substances obtained by means of nuclear transformation.
Of course, patents cannot be granted to inventions that are contrary to the law, social morality or that are detrimental to the public interest. In addition, a patent cannot be granted if the origin of genetic resources is not indicated or satisfied with related provisions.
What are the different stages in patent litigation?
In China, when a patentee files a patent infringement lawsuit, it is handled as a civil matter. At the same time, the alleged infringer may challenge the validity of the patent at issue before the CNIPA Reexamination and Invalidation Department. Generally, in this scenario, the patent infringement lawsuit and invalidation request are on separate, parallel tracks. However, the IP tribunal of the Supreme People's Court has begun hearing infringement and invalidation cases together as of January 1 2019, with the exception of civil litigation involving design patents.
For patent infringement lawsuits, the case may go through first and second instance court stages, depending on the circumstances. The trial of the first instance may proceed as follows: request for preliminary injunction before the lawsuit is filed, the filing of the lawsuit, defendant's objection to jurisdiction, exchanging of exhibits, pre-hearing, court hearing(s), and decision.
Yan Wang's practice focuses on all aspects of intellectual property law in both China and the United States. He has helped many international high-tech companies develop their businesses. Through the years, Mr Wang has worked on patent, trademark, copyright, trade secret, standard-related, and antitrust disputes. His work has covered a vast spectrum of fields such as chemistry, petro chemistry, semiconductors, computer software, electronics, communications, optics, cryptology, medical devices, and biological sciences. Mr Wang holds a doctorate degree from Columbia Law School and master's degree in electrical and electronics engineering from Yale University.
Lili Wu has extensive experience in strategically managing patent portfolios for both multinational clients and small and mid-size clients to help increase the value of their IP assets in China. Her experience spans various technology industries, including electronic devices, the internet, clouding, AI, telecommunications, information technology, automobiles, medical devices, manufacturing and green energy. Ms Wu has litigated many patent cases over the years, and has represented clients in several court cases which have been recognised as typical cases by the PRC Supreme People's Court and the Beijing High Court. Ms Wu was recognised as an IP Star by Managing Intellectual Property in 2017 and 2018.
Tao Zhang has practised as a patent attorney for over 15 years. He has extensive experience in patent prosecution, invalidation, litigation, searching, licensing and other patent-related work. He has represented both multinational and domestic companies in various fields including mechanical devices, automobiles, medical devices, electronic devices, and software.
Yan Wang Lili Wu Tao Zhang
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.