In contrast to the
First, a qualified entity that has made reasonable requests for authorization but has failed to come to terms with the patent holder in a reasonable time. Second, SIPO may grant a compulsory license in the event of a national emergency, extraordinary state of affairs, or where the public interest so requires. Finally, a compulsory license may be granted when the exploitation of a later invention depends on the exploitation of the patent right in question.
A compulsory license is not an exclusive right and does not permit the licensee to further authorize others to exploit the patent right. In addition, an entity or individual that is granted a compulsory license is required to pay a reasonable fee to the patentee. The fee should be negotiated between the parties, but failing an agreement, SIPO determines an appropriate payment. Finally if the patentee is dissatisfied with the grant of the compulsory license, or the licensee is dissatisfied with SIPO's adjudication of the reasonable fee, either party may institute legal proceedings within three months of being notified.
]]>Designs are one of the three categories of patents along with inventions and utility models. While all three categories share numerous provisions of the China Patent Law, in some instances designs diverge from the other two, and it is worthwhile to explore designs individually.
"Design" in the China patent law is defined as any new design, shape, the pattern or their combination, or the combination of the color with shape or pattern, of a product, which creates an aesthetic feeling and is fit for industrial application. As noted previously, the duration of the patent right for a design patent is 10 years.
Whereas the protection right for an invention or utility model is defined by the claims, designs rely on drawings or photographs depicting the patented design. The drawings or photographs are limited in size, and may be accompanied by a brief explanation of the design. An applicant seeking a design patent must submit these drawings or photographs along with a request and the product incorporating the design, and the class to which that product belongs. The application is limited to one design incorporated in one product.
Once filed, the application is only subject to a preliminary examination as to compliance with formal requirements. The preliminary examination is essentially an expedited process to a patent grant so long as the design at issue is not identical with, or similar to any design, which before the date of filing, has been publicly disclosed in publications anywhere, and must not collide with any prior legal rights obtained by any other person. SIPO will make a decision to grant the paten right for the design, issue the certificate, and register and announce it after the preliminary examination.
Once granted, a design patent operates much like a patent for an invention or utility model in protecting the rights of the patentee. No entity or individual may, without authorization of the patentee, exploit the design by making, selling or importing any product incorporating the patented design.
]]> SIPO receives all Chinese patent applications submitted for examination. For utility model and design applications
The preliminary examination is a check to see if the application meets the requisite filing standards. The applicant is notified of any issues after the preliminary examination and is afforded a limited time to correct any errors or omissions. Once an application conforms to the statutory requirements, the application will publish within 18 months of the filing date, or earlier at the applicant's request.
Applicants for inventions have up to three years to formally request a substantive examination of the application. In the alternative SIPO may, on its own initiative choose to substantively examine any application. Amendments to an invention application may be made at the time of request or within 3 months of the initiation of substantive examination.
If, after a substantive examination, SIPO finds that the application does not meet the standards of novelty, inventiveness, practical applicability, or some combination thereof, the applicant is given an additional chance to amend or respond. After the applicant's response or amendment SIPO will make a final decision to deny or grant the invention patent application. As noted previously, a denied application may still be appealed to the PRB for reexamination, or the applicant may institute a legal proceeding to review the rejection.
]]>
Chinese patent applications for an invention or utility model require a request, a description including an abstract and drawings where necessary, and claims. The application must be submitted in Chinese. An application is limited to one invention or utility model, however two or more inventions or utility models belonging to a single general concept may be filed as one application.
1. Request
The request must include the title of the invention or utility model, the name of the inventor or creator, the name and address of the applicant. Additionally, foreign filing information and priority information should be included at the time of the request. If the application has previously been filed in a foreign country, SIPO reserves the right to request any search documents or examination results from the applicant. Failure to provide these documents could result in the withdrawal of the application.
2. Description
The description provides detailed information about the invention or utility model sufficient to allow a person of ordinary skill in the art to carry it out. The description should include a title, relevant technological field, relevant prior art, the purpose of the invention or utility model, a best mode and a detailed description thereof, and reasons the invention or utility model is superior to the prior art. If drawings or figures are provided, a detailed description of them should also be included. The abstract should briefly state the main technical points of the invention or utility model.
3. Claims
Finally, a Chinese patent application must include claims that define the extent of protection of the patent right. The claims must be supported by the description and state the scope of the patent protection desired. The description and appended drawings may ultimately be used to interpret the claims. An invention or utility model shall have only one independent claim preceding any dependent claims. The independent claim shall outline the technical solution of an invention or utility model and state the essential technical features necessary for the solution of its technical problem. The dependent claim shall, by additional technical features, further refine the claim to which it refers.
]]>
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
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
Absolute novelty is further enhanced by
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
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.
]]>The China Patent Law protects three distinct categories of patents. "Inventions" include any new technology related to a product, process, or any improvement to a product or process. "Utility Models" include any new technology related to the shape or structure of a product. Finally, "Designs" relate to a new design of a shape, pattern or color of a product. Inventions have a patent term of 20 years from the date of filing, while utility models and designs are limited to a 10 year term.
While the three forms of patents are normally protected, the China Patent Law also explicitly excludes a number of things from. Scientific discoveries, rules and methods for mental activities, business methods, methods for diagnosis and treatment of diseases, animal and plant varieties, and substances obtained by means of nuclear transformation are barred protection.
Much like the
Finally, the China Patent Law includes a catchall that any patent "contrary to the laws of the State or social morality or that is detrimental to public interest," is also denied protection.
The next post in the series will cover patentability in
]]>
1. Courts in Patent Prosecution
Even after all administrative appeals are exhausted through the PRB, an applicant may still seek judicial review through the Intermediate People's Court in
2. Courts in Patent Litigation
As noted earlier, SIPO and the PRB provide an administrative outlet to handle patent litigations. Alternatively, a patent litigant may utilize the court system to adjudicate the dispute. To initiate litigation, a party files a complaint through a local Intermediate People's Court. Many of the Intermediate People's Courts and Higher People's Courts rely on Intellectual Property Tribunals to handle these disputes. In addition to having jurisdiction to hear litigations in the first instance, the Intermediate People's Court also serves as an appellate court for decisions rendered by the PRB on the administrative side.
A decision at the Intermediate People's Court can be appealed to the Civil Division of the supervising Higher People's Court. Finally, in recent years, the Supreme People's Court, Higher People's Courts, and a number of Intermediate People's Courts have established an IP Litigation Division that specializes in IP matters. The IP Litigation Division is stocked with judges and professionals whom have both the technical education and professional experience to preside over the trial.
The next post in the series will cover statutory requirements for patent eligibility in
The State Intellectual Property Office (SIPO) is the patent office for
While SIPO is the central office responsible for patents in
1. SIPO, the PRB, and Applicants; Prosecuting Patent Applications
SIPO and the associated local Intellectual Property Offices initial role is to receive and examine applications for patents. Similar to the United States Patent and Trademark Office, SIPO may first issue a rejection of the application, but provide the applicant with an opportunity to respond. SIPO will review the response from the applicant, and if not satisfied, will then issue a final rejection. An applicant may submit an appeal to the Patent Reexamination Board (PRB) within three months of receipt of the final rejection.
The PRB is an extension of SIPO and consists of a number of examiners experienced in both technical and legal matters. The PRB will review an appeal and determine both patentability and validity. The PRB may provisionally withdraw, non-provisionally withdraw, or sustain the final rejection. The decision by the PRB essentially exhausts an applicant's administrative remedies. However, judicial remedies may still be preserved.
2. SIPO and Adverse Parties; Litigating Patent Disputes
The administrative arm of the Chinese patent system also assists in the protection of patent rights. While an aggrieved party may also seek judicial remedies, administrative proceedings are often preferred in order to conserve judicial resources. To initiate a litigation proceeding on the administrative side, a complaint is filed at a local intellectual property office in an appropriate province. The administrative agency will attempt to mediate the dispute before any additional legal proceeding, and may issue fines or seize property.
Notably, the administrative agency cannot award damages to a wronged party. Administrative orders may be appealed to the Administrative or Civil Divisions of the Higher People's Courts, which generally supervise administrative agencies for patent litigation disputes. While a litigant could bypass the administrative track altogether and directly file a complaint in court, most civil patent litigations proceed first through the administrative process due to the lower cost.
3. SIPO, the PRB and Third Parties; Invalidation Proceedings
According to the China Patent Law, once SIPO grants a patent right, any individual who disagrees may request an invalidation proceeding before the PRB. An invalidation proceeding may apply to all or only part of a patent right. A person initiation an invalidation proceeding must submit a detailed request along with all necessary evidence for the proceeding. The PRB has discretion to accept or deny a request for invalidation.
If an invalidation request is accepted the petitioner may submit additional evidence. The patentee may also attempt to narrow the scope of protection by amending the claims. Either the petitioner or the patentee may further request an oral hearing before the PRB. The PRB will reexamine the application in light of the additional evidence, amendments and/or oral hearing and render a decision. The PRB may declare the patent invalid as a whole or in part, or sustain the patent right based on the evidence.
The next post in the China Series will cover Judicial Patent Proceedings within China.
]]>
The
A. Supreme People's Court of the People's Republic of China
At the top of the hierarchy is the Supreme People's Court, located in
B. Local People's Courts
The remaining three levels are collectively known as the Local People's Courts. These courts are responsible for issues at the provincial level, autonomous regions, and municipalities under the Central Government. The Local People's Court, also known as the courts of first instance, handles both criminal and civil cases.
1. The Higher People's Court
The Higher People's Court has original jurisdiction in cases assigned by law, or transferred from lower courts. Additionally, the Higher's People's court hears major criminal cases which might affect an entire province. Finally they may also hear cases of appeals against judgments and orders delivered by lower courts or protests filed by the people's procuratorates.
2. The Intermediate People's Courts
Below the Higher People's Courts sit the Intermediate People's Courts. The Intermediate People's Courts are established at the level of prefectures, autonomous prefectures, and municipalities. The Intermediate People's Court has original jurisdiction in some cases, including those transferred from Basic People's Court, major cases dealing with foreign parties and criminal cases potentially punishable by life sentence or death. Finally the Intermediate People's Court hears some appeals and protests from the Basic People's Court.
3. The Basic People's Courts
The Basic People's Courts are the lowest level general jurisdiction courts in
Throughout the system, litigants are generally limited to one appeal, on the theory of finality of judgment by two trials. Appeals are often reviewed de novo as to both law and facts.
Part One will constitute a brief introduction to the broader Chinese Court System. New posts in the series will occur every few days.
]]>On September 14, 2009, USPTO Director David Kappos delivered the opening remarks to the patent attorneys and others attending the IPO Annual Conference. Mr. Kappos outlined several initiatives presently underway at the Patent and Trademark Office, as well as the challenges facing the Office.
Among the initiatives mentioned by Mr. Kappos were several programs to cut pendency, such as one allowing applicants to advance an application in the examining queue in exchange for withdrawing an application from the queue, thereby allowing applicants and examiners to focus on the applications that are important to applicants. Another initiative involved reexamining the current count system and achieving a system that would minimize the amount of Requests for Continued Examination in the patent prosecution process. Mr. Kappos also stated a commitment to increasing participation in worksharing projects such as the Patent Prosecution Highway as well as active participation in patent reform discussions in Congress.
Mr. Kappos described funding as the largest challenge to the operations of the USPTO. Following the economic downturn, the Patent and Trademark Office experienced a $200M shortfall due to a decrease in filings, issuances and maintenance payments. Consequently, the USPTO has suspended hiring for fiscal year 2010. In order to implement improvements to the funding process, the USPTO has established certain objectives, including: first action pendency to 10 months and overall pendency to 20 months; decreasing the backlog to ~300,000 cases; reducing appeals pendency to 3 months; and reducing reexamination pendency to 1 year. Other objectives included improving PCT processing and implementing a robust IT system for fully electronic processing of applications.
The full text of Mr. Kappos's speech is available on the USPTO website.