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    Know-How->Patent>Common Question & Answer
 

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1. Q: What types of patents are available in China?

A: There are three types of patents in China, the Patent for Invention, the Patent for Utility Model and the Patent for Design. Note that the Patent for Invention in China is similar to the Utility patent in the U.S. The Patent for Utility Model in China is similar to the Utility Model patents in Europe in that it is not examined. Chinese patents use the First-to-file rule.

�� Patent for Invention
o Term 20 years from date of filing or priority date
o Excludes scientific discoveries, rules and methods for mental activities, methods for the diagnosis or for the treatment of diseases, animal and plant varieties, and substances obtained by means of nuclear transformation.
�� Patent for Utility Model
o Term of 10 years from date of filing or priority date
o In addition to the limitations for patent for invention, excludes methods and chemical compounds.
�� Patent for Design
o Term of 10 years from date of filing or priority date.

2. Why would one get a Chinese Utility Model patent?
A: The Chinese Utility Model patent may be obtained to receive fast protection of an invention. Because it is not examined, typical grant times are 6 months to one year verses 1 to 4 years for an invention patent. For technologies that are rapidly changing, such protection may be attractive since utility models typically cost around 40% of the cost of invention patents. Both a utility model patent and an invention patent application may be applied for at the same time. At the time of examination of the Invention patent, the applicant will be required to choose between the two patents. If the Invention patent is chosen, the Utility model patent will be invalidated on the date the Invention patent issues.

3. Do products manufactured using a patented process receive protection in China?
A: Yes, Under the new patent law effective July 1, 2001, products obtained directly from a patented process have patent protection. No one may use, offer for sale, sell, or import into China a product that was obtained directly from a process which has patent protection in China

4. Is software patentable in China?
A: This depends on the invention in question. In general the Chinese Patent Office considers software to be unpatentable. However, where the invention resolves a technical problem by technical means and produces a technical effect, patent protection is allowed (this is a three stage test). Unlike recent rulings in the U.S. and Europe, claims to media containing computer software (e.g. a computer readable medium on which a computer program according to claim X is recorded) are not allowed in China. For more information please see our article on computer related inventions and business methods in China.

5. How long does it take to get a patent in China?
A: China has been working to decrease the time it takes to have a patent issue. The time depends upon the technology involved and the number of applications submitted to the Chinese patent offices. Presently, invention patents typically take two to four years after the entry into substantive examination and utility model patents take 4 months to 15 months.

6. Can a foreign person or company file directly with the Chinese Patent Office?
A: No, a foreign entity must use an approved domestic law firm.

7. How do you enforce IP protection in China?
A: There are two basic avenues for enforcing IP protection in China: through administrative agencies and through the courts. When administrative agencies are provided evidence of infringement of an intellectual property right, they will quickly (usually within days) raid the establishment to seize and destroy the infringing products and methods of production. Note that the gathering of evidence against an infringer is different in China than in the U.S. and other parts of the world. In China there is no discovery and depositions are not taken from the opposing party. Evidence is obtained by utilizing private investigation methods. China Sinda has it's own internal expert private investigators. We are experienced in working with administrative agencies to have raids performed. The administrative agencies may fine the infringer, but only Chinese courts may give and enforce damages.

8. How effective is IP protection in China?
A: Intellectual property protection in China is both good and bad. It is good in that the Chinese government is active in combating infringement. When proof is obtained of infringing activity, administrative agencies provide a method whereby the infringement may be quickly and effectively stopped. However, there are many infringers active in China. If a company plans on marketing their products in China, they should plan on establishing a continuing anti-counterfeiting effort to keep counterfeiters at bay.

9. What is needed to file for a patent in China?

A: When a patent application is filed in China through China Sinda., the following documents are required:

* A letter of instructions indicating the type of the application to be applied for, e.g. a patent for invention, a patent for utility model or a patent for design; the name, address and nationality of the applicant and inventor; the filing date, country and serial number of the convention patent application or patent based on which the priority right to be claimed, if any;

* A description, claims and an abstract;

* Drawings (if necessary for describing the invention) .

* Power of Attorney executed by the applicant, which is neither necessary notarized nor legalized and can be late furnished after filing within the time limit prescribed by the Patent Office;

* Certified Priority Document, which shall be submitted to the Patent Office within three months from the Chinese filing date otherwise the claim of priority shall be deemed not to have been made;

* Assignment of Priority Right, either in the original form of it singed before the Chinese filing date or a notarized or certified copy of the original, if the applicant for the Chinese application is different from that recorded in the priority document, which shall be submitted to the Patent Office within 3 months from the Chinese filing date;

* For entry into national phase in China of a PCT international application, international publication pamphlet, international preliminary examination report with annex and any amendments concerned if the applicant would like to bring such amendment into the examiner's consideration during the examination on the application in China.

10. Can patent filings be made in languages other than Chinese?
A: No. All submissions to the Chinese patent and trademark offices must be made in Chinese.

11. When can a patent application be amended?
A: The new Patent law further restricted the opportunities for voluntary amendment. The applicant is allowed to make voluntary amendments:-
�� When the substantive examination is requested and
�� Within three months from receiving notification of entering Substantive examination.
After this any amendments, which are not necessary to satisfy the examiner's requests in an office action, may be rejected. In practice amendments that overcome defects in the application are usually allowed, even if not requested by the Examiner, as long as they do not broaden the original scope of the claims. However, if changes may be expected to an application, a delay in requesting the substantive examination should be considered in order to give more time for filing voluntary amendments,
especially if the amendments are likely to broaden or significantly alter the form of the claims.

12. Why does China Sinda give such special attention to our clients rejections from the Chinese Patent Office.
A: China Sinda understands that the goal of patent filing is to receive the broadest possible claim coverage. We are very skillful in helping our clients receive the broadest possible scope for their claims. Please contact us if we may assist you with claim scope or any other patent filing problem you are having in China. Sinda@chinasinda.com.

 
       
     
 
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