November 2009 Archives

            Under the China Patent Law, the right to apply for a patent depends on whether the invention is a "service invention-creation" or a "non-service invention creation."  If an invention stems from tasks performed in the course of service to a particular entity, the invention is a service invention-creation.  This rule also applies to invention-creations created within one year of resignation, retirement or change of work, if the invention-creation relates to previous tasks performed for the entity. 

            In these circumstances, the right to apply for the patent belongs to the entity, although the inventor creator has a right to be listed as such on the patent document.  The inventor-creator of a service invention creation is also entitled to a reasonable reward to the extent the patent generates an economic benefit for the entity.  However, the China Patent Law does state that an agreement between an employer and employee concerning patent rights will prevail over the default rules.

            For a non-service invention creation, the right to apply for a patent belongs to the inventor or creator.  If a patent is granted, the inventor is the patentee.  Furthermore no entity or individual can prevent an inventor from filing an application for a non-service invention.

            For an invention-creation jointly made by two or more entities or individuals, or made by an entity or individual in execution of a commission for another entity or individual, the right to apply for a patent belongs, unless otherwise agreed upon, to the entity or individual which made, or to the entities or individual which jointly made, the invention-creation. After the application is approved, the entity or individual that applied for it shall be the patentee.

            Finally, a note on agency.  Under the China Patent Law, any foreigner, foreign enterprise or other foreign organization that does not have a habitual residence or business office in China applies for a patent, or has other patent matter to attend to; they must appoint an agent to act on their behalf that has been approved by SIPO.  Domestic applicants, on the other hand, may appoint an agent to handle their patent affairs, but are not required to. 

In order to be eligible for protection under the China Patent Law, an invention or utility model must be novel, inventive and have practical applicability. 

            1.  Novelty

            The China Patent Law adopts a unique definition of novelty, referred to as "absolute novelty."  Under current law, absolute novelty means that before the Chinese filing date, an identical invention has not been (1) published in China or abroad or (2) publicly used or made known by any other means in China.  Thus, absolute novelty is very broad, covering nearly all prior disclosures in China, and all publications abroad.  Notably, the use or sale of the same invention abroad does not bar protection.   

            Absolute novelty is further enhanced by China's adoption of a first to file system.  The filing date in China not only establishes priority of invention among competing applications, but also determines novelty.  Effectively this means that an inventor does not receive a grace period to file his invention after public disclosure, and may bar himself immediately by doing so.  Thus, most inventions publicly disclosed prior to the date of filing fail the novelty test.

            However, this first to file rule is subject to three exceptions.  An invention retains its novelty if filed within six months of being (1) first made public at an international exhibition sponsored or recognized by the Chinese government, (2) first made public at a prescribed academic or technological meeting, or (3) disclosed without the applicant's

consent.  To be eligible for this six month grace period, an applicant must present evidence to SIPO that they qualify for an exception within two months of the filing date.

            2.   Inventiveness

            In addition to being novel, the inventiveness test for patentability in China requires the "invention" have prominent substantive features and represent notable progress.  Meanwhile a "utility model," need merely have substantive features and progress.  Not unlike the test for non-obviousness in the United States, the test for inventiveness involves a comparison of the application to the prior art.  The invention or utility model must have substantive differences beyond the technology existing at the time of filing and beyond the realm of a person of ordinary skill in the arts. 

            3.  Practical Applicability

            Finally, an invention or utility model must have practical applicability.  This prong requires that the invention or utility model can be made or used and produce effective results.  Each application is examined individually without regard to other inventions, and is typically the first hurdle an applicant must clear during examination.