What are the criteria for Patentability in your Jurisdiction?
In China, there are three types of patents
- Invention
- Utility Model
- Design
Only invention patents are subject to substantiative examinations.
All patent application must first pass the patent-eligibility bar:
- An invention patent application must be directed to a new product or process of a technical nature.
- A utility model application must be a limited to a product’s shape and structure. Protection for a processor unknown type of material should be sought under an invention rather than a utility model.
- A design application must be directed to a new aesthetic industrial design of product’s shape or pattern.
To satisfy the practical utility requirement, an invention, or utility model must be reproducible and produce beneficial effects. To satisfy the disclosure and enablement requirements, an invention or utility model must be described in a manner that is sufficiently clear and complete so as to enable an ordinary person in the art to carry it out. The absolute novelty bars are applied in China. This means that an invention or utility model must not be a part of any prior art in China and abroad, and must not have been described in any patent application previously filed in China or a Patent Cooperation Treaty application valid in China.
‘Inventiveness’ implies that an invention or utility model must have the prominent substantive feature or substantiative features compared to the state of art, and must represent considerable progress, or progress. For a design patent, it must not be a prior design or conflict with any legal rights obtained by the other parties before filing date. Further, it must be significantly different from a prior design or a combination of prior design feature. For an invention or utility model, the claim must be supported by the description and contains all technical features for solving the technical problems and must be definite and concise.
What types of inventions are explicitly excluded from patent eligibility?
Some types of subject matter are legally excluded from patent protection including:
- Inventions that are contrary to the law of the state
- Inventions that are contrary to social morality
- Inventions that are detrimental to the public interest
- Scientific discoveries
- rules and methods for mental activities
- method for diagnosis and treatment of disease
- plant varieties and animal breeds
- Substances obtained by the means of nuclear transformation
- Designs of two-dimensional printing goods comprising patterns, colors or a combination thereof, and which serve mainly as indicators.
Further, the subject matter is not reproducible in contrary to natural law, is created by natural condition, or release to a surgical method will be filtered out for the lack of practical utility.
To what extent can an invention covering software or computer-implemented inventions be patented?
Software, computer program and program instruction per se are categorised as”rules and method for metal activities and are not patentable subject matter. Nevertheless, inventions that are implemented wholly or partially through software can be patentable if they involve a technical character. The convention method for drafting a product claim defining more than one functional component, each of which corresponds to step in the computer-implemented method. This approach may be unfavorable when it comes to litigation due to difficulty in identifying counterparts of software components in relevant products.
In April 2107, the guidelines for Patent Examination came into effect and the means of drafting software related or computer-implemented claims have since become relaxed. According to the revised guidelines, computer readable media carrying program instruction which was previously excluded from patent protection have become patent eligible.In addition, claims to seek to protect an apparatus, comprising a memory in which computer executable program instruction is stored and a processor configured to perform actions on an execution of the instruction are now acceptable.
To what extent can inventions covering business be patented?
Inventions covering business methods are not excluded from the patent protection provided that they involve a technical character. If a claim relating to business model contains not only business rules and methods, but a technical feature it will be eligible for patent protection. However, business methods implemented with the general computer and internet technology and no improvement in terms of technical aspects may still be rejected.
Are Inventions on any other kind of Invention?
No, are there other forms of protection for the invention that do not meet the criteria for patentability. In China utility models are patents are available for so-called ‘small-inventions’.The inventiveness bar for utility model patents is lower than that for invention patents. Utility model patent applications are not subject to substantiative examination, but rather formality examination only. Utility model patent has a 10years term, which is shorter than that of invention patents. In case of infringement involving a utility model patent, if the defendant requests the court to stay the proceedings by filing an invalidation petition within the response term of a lawsuit, the court will generally stay the proceedings. In addition, the court may request the plaintiff to submit a utility model patent right evaluation report to prove the stability of the disputed patent. In practice, the courts often decide lower statutory damages for utility model patent infringement than for invention patent infringements.
Does your jurisdiction have a grace period? If so, how does it work?
Yes, an invention is not anticipated by a disclosure of an invention in six months precedings the filing or priority date;
- An international exhibition sponsored or recognized by Chinese Government
- at a prescribed academics or technological meeting
- by any person without the applicant’s consent
What type of patent opposition procedures are available in your Jurisdiction?
No opposition procedure is available in China. However, there is invalidation procedure, which is mentioned below.
Are there any other ways to challenge a patent administratively without resorting to litigation?
In China, there is only one procedure to challenge a patent, namely the patent invalidation procedure before the patent re-examination board. Any party may initiate invalidation proceedings with the board at any time after granting of a patent. An oral proceeding is usually held, before which the applicant may amend the patent claims in response to the invalidation request. However, such amendments may be strictly limited. Any patent rights that are declared invalid will be deemed to have been non-existent from the beginning.
What is the process for appealing a decision of the patent office in your jurisdiction? Is there data on the rate of success for such reviews?
If a patent application is rejected, the applicant can ask the Patent Re-examination Board to overrule this decision. Further, in order to challenge a patent, the petitioner must initiate invalidation proceedings with the board. If the applicant or petitioner is not satisfied with the board’s decision, it can appeal to the Beijing IP Court and then to the Beijing High Court to review the first-instance judgment. The second-instance decision is final, although a retrial before the Supreme Court is available.
According to the statistics of the Beijing IP Court, in 2016 the success rate for such reviews was around 12.5% (9.6% for reversing re-examination decisions for rejections and 13.9% for reversing invalidation decisions).
What is the cost of obtaining a patent in your jurisdiction? How long does the examination and registration process usually take?
If an invention patent application is around 5,000 words long in English, the total cost will be around $6,000 from filing to grant, including official fees, attorneys’ fees, and translation fees. A utility model or design application will cost between $1,000 and $1,500.
On average, it takes 22 months from the start of the substantive examination for an invention patent application to be granted. Thus, the applicant may expect to obtain an invention patent approximately three to four years after filing. For a utility model or design patent, it may take approximately three to six months from filing for grant of the application. In addition, a patent application takes around one to three months from the issuance of the notice of allowance to the issuance of the notice of grant.
What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?
A court action is the most effective way for a patent owner to enforce its rights in China. By filing suit before the competent court, the patent owner may obtain remedies such as a preliminary injunction, a permanent injunction, and damages.
Does your jurisdiction have non-judicial administrative enforcement mechanisms for patents? What types of remedy are available?
China does have non-judicial administrative enforcement mechanisms for patents. Outside of court action, patent owners may also request the administrative authority for patent affairs to handle a patent infringement dispute. The patent owner may obtain a permanent injunction through the administrative authority, but the authority cannot award damages.
What are the stages in the litigation process leading up to a full trial?
Once the patent owner has filed suit, the defendant has 15 days to respond or 30 days if it is a foreign party. The parties usually have 30 days to file evidence and one or more court hearings may be held. After the hearing, the court issues its first-instance decision. This may be appealed to a higher court by either party; the second-instance decision is final.
What scope is there for forum selection?
In China, there are more than 80 intermediate people’s courts and three IP courts with the power to handle patent infringement cases. Jurisdiction is typically determined by two factors:
- the location of the defendant; and
- the place where the infringing activity took place.
As a strategy, the plaintiff may select a court away from where the defendant is located to avoid possible influence by the defendant.
Are there specialized IP courts in your jurisdiction? What litigation forums are most heavily used by patent owners in your jurisdiction?
There are three specialized IP courts in China: the Beijing IP Court, the Shanghai IP Court, and the Guangzhou IP Court. These courts are heavily used by patent owners.
What level of expertise can a patent owner expect from the courts?
The courts in larger cities have more experience of patent cases. In Beijing, Shanghai and Guangzhou, patent-related cases are tried by specialized IP courts. The judges in those courts usually have a high level of expertise.
Are there ways for defendants to delay proceedings? Can plaintiffs prevent them from doing so?
A defendant may delay proceedings for up to three months by filing a jurisdiction opposition petition. The plaintiff cannot prevent this opposition. The defendant may also request the court to stay the proceedings by filing an invalidation petition with the Patent Re-examination Board within the response term of a lawsuit. The court will generally stay the proceedings in cases involving a utility model or design patent.
Is there any procedure for discovery? What are the methods for compelling a counterparty to turn over evidence?
There is no discovery procedure in China. The burden of proof usually falls on a plaintiff. However, where the patent relates to the method for producing the new product and the patent owner can prove that the defendant is producing a identical product, it will fall on defendants to prove that the method it uses is different from the patented method. In addition to some evidence, the accounting books and material relating to infringing act will mostly be under the defendant’s control; therefore, if the patent owner has provided initial evidence regarding the benefit obtained by the defendant, the court may order the defendant to surrender such books and materials. If the defendant refuses without cogent reason, the court may determine the damages by reference to the patent owner’s evidence.
Are case decide by one judge? a panel of judge or jury?
Patent cases are usually decided by a panel of three judges although a panel of five judges may sit in important cases. There is no jury system in China.
What role can and do expert witnesses play in the proceedings?
An expert witness may provide an affidavit to the court as evidence of the parties. The expert must be present in court to undergo cross-examination in order for his or her evidence to be considered by the court unless there are extenuating circumstances. In some cases, the court may request the parties to call certain experts to explain the technology at issue.
Does your jurisdiction apply the doctrine of equivalents and if so, how?
China applies the doctrine of equivalents. If a feature is not the same as a feature in the patented claim, but is implemented by substantially the same means, realizes substantially the same function and effect, and is easily conceived without requiring creative labor from a person skilled in the art, it will be regarded as an equivalent feature.
Is it possible to obtain preliminary injunctions? How serious is the risk of disruption to an accused infringer’s business?
It is possible to obtain a preliminary injunction if:
1.it is highly likely that the act being conducted or to be conducted will infringe IP rights;
2. such an act will likely cause irreparable harm to the petitioner’s legitimate rights;
3. the petitioner has paid the necessary deposit; and
4. the grant of a provisional or preliminary injunction will not harm the public interest.
5. How are issues around infringement and validity treated in your jurisdiction?
Infringement issues are handled by the courts and validity issues are handled by the Patent Re-examination Board. A patent is presumed valid unless it is pronounced invalid by the board. The board’s decision as to whether a patent is valid may be appealed to the Beijing IP Court, whose decision may, in turn, be appealed to the Beijing High Court. The decision of the Beijing High Court is final.
What are the remedies available to a successful plaintiff? Which remedies are most often awarded by the courts?
In China, the court may grant a preliminary injunction, a permanent injunction, and damages to a successful plaintiff. Permanent injunctions and statutory damages are those most often awarded by the courts.
