Patents

• Author: Donna Suchy
• Pages: 1-150

1

CHAPTER 1

Patents

Stephen Yang, Jiancheng Jiang, Hu Yuzhang,

C. Frederick Koenig III, and Yin Shao

A. Scope of Patent Rights Available

China’s Patent Law was first adopted on March 12, 1984, and came into force

on April 1, 1985. Then it was amended three times, in 1992, 2000, and 2008.

The current Patent Law came into effect on October 1, 2009.

Section A addresses general issues, including implementing legislation,

the different forms of Chinese patents and the protection they afford, and

types of subject matter not suitable for patent protection.

1. Basis for Practicing

There are many patent-related laws, rules, regulations, or measures formu-

lated by various authorities in China, but the most important ones for Chi-

nese patent practitioners are as follows:

• The Chinese Patent Law is equivalent to Title 35 of the United

States Code.

Mr. Yang and Mr. Jiang work for Peksung Intellectual Property Ltd., China. Mr. Jiang is the

author of “Special Section on Chemistry and Biotech Invention Patent Applications” only.

Mr. Hu, managing partner of a Chinese patent firm, Junbo IP, is the author of “Graphical User

Interfaces.” Mr. Koenig and Mr. Shao work for Volpe and Koenig, P.C. and wrote section D.

This chapter was reviewed by Sean Suiter, Suiter SwantzPC LLO, and David Postolski, Gear-

hart Law LLC.

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2 IP Protection in China

• Implementing Regulations of the Chinese Patent Law revisions

came into effect on February 1, 2010.

• The Guidelines for Patent Examination of the State Intellectual

Property Office (SIPO) find their counterpart in the Manual

of Patent Examining Procedure (MPEP) of the U.S. Patent and

Trademark Office (USPTO) and are roughly equivalent to Title 37

of the Federal Register. The latest major revision came into effect

on February 1, 2010. Different from MPEP, which is regarded as

the USPTO’s own interpretation and application of the patent law

and rules, the Guidelines for Patent Examination of SIPO have the

status of department regulations, which form part of the law. Even

in courts, the Guidelines for Patent Examination are used as the

legal basis for decisions. However, SIPO has the sole discretion to

revise the Guidelines for Patent Examination without the need to

go through a legislative body (i.e., the Standing Committee of the

National People’s Congress). Many of the revisions have to do with

the specific practice of examination. However, some revisions have

a significant impact on patent practice, such as the interpretation

of claims or even patentable subject matter. For example, a current

revision allows design protection for products having a graphical

user interface (GUI).

• Judicial Interpretations issued by the Supreme People’s Court

(SPC) are similar to tests given in case laws and are to be regarded

as rules for judges and practitioners to follow in dealing with

specific cases. The SPC issues judicial interpretations on various

aspects of patent practice on an irregular basis. Lower-level courts,

such as Beijing High People’s Court, also issue guidelines for deal-

ing with specific case types. However, such guidelines are limited

to the practice in those specific courts and have no effect on other

courts outside of their jurisdiction.

2. Jurisdictions

For historical reasons, a Chinese patent is only valid in mainland China

and does not cover Hong Kong, Macao, or Taiwan. Currently, a Hong Kong

standard patent may be pursued by extending a Chinese patent to Hong

Kong following a two-step procedure. A granted Chinese patent can also be

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Patents 3

extended to Macao. However, even though the patent laws in Hong Kong or

Macao are different from those in China, if for any reason a Chinese patent

is not granted, such extension to Hong Kong or Macao becomes impossible,

a problem separate applications in Hong Kong or Macao would obviate.

No extension of Chinese patents to Taiwan is possible at all. However,

currently a Chinese patent application filed with SIPO can claim priority

from a Taiwan patent application and vice versa, but this only applies to

applicants from mainland China and Taiwan.

3. Types of Patent Rights Available and Their Terms

The Chinese Patent Law provides for three types of patent rights: invention

patents, utility model patents, and design patents, which are collectively

called invention-creation.

Article 2 of the Chinese Patent Law gives the definition of each as follows:

• “Invention” means any new technical solution relating to a prod-

uct, a process, or an improvement thereof.

• “Utility model” means any new technical solution relating to the

shape or structure, or their combination, of a product, which is fit

for practical use.

• “Design” means any new design of the shape or pattern, or their

combination or the combination of the color with shape or pat-

tern, of a product, which creates an aesthetic feeling and is fit for

industrial application.

A design is not regarded as a technical solution, and a design patent does not

protect the technical aspect of a product but only the appearance thereof.

According to Articles 39 and 40 of the Chinese Patent Law, for all three

types of patents, patent rights take effect as of the date of the announcement

of the grant of patent rights. This date is usually a few months after an appli-

cant pays the issue fees.

However, Article 42 of the Chinese Patent Law prescribes that the terms

of patent rights are counted from the date of filing, not the date of announce-

ment; the term of invention patent is 20 years; and the term of utility model

patent and design patent is 10 years. According to Rule 11 of the Implement-

ing Regulations of the Chinese Patent Law, the date of filing from which

patent term starts is the date of filing in China, not the priority date that a

Chinese patent application may have claimed.

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