1. China Patent Practice Nongfan Zhu, Ph.D. Yanqin Song
China Science Patent and Trademark Agent Ltd.
September 2006

2. Evolution of Legal Environment
CSPTAL
Evolution of Legal Environment
Future (~ 2020)
IP enforcement at world class levels
Sophisticated business laws & regulations
Predictable results from courts
Enforcement of judgment
“Bu Zhidao”
“Mei You”
“Bu Keyi”
Everything prohibited unless specifically permitted
No transparency -“neibu” regulations
Primitive IP laws
Then (~ 1990)
Reasonable transparency – consultation on laws
Major IP laws at international standard
Increasing predictability in courts
Some enforcement
Now (~ 2005)

3. Chinese Patent Law Original patent law effective on April 1, 1985
First amendment to patent effective on January 1, 1993
Chemical, medicine, food and beverage became patentable subject matter
Second amendment to patent effective on July 1, 2001
Third amendment under legislation process, expected to be in 2008

4. CSPTAL
Patent Applications

5. Top 10 Filing By MNCs in 2005 Rank Company Appln. No. 1 Samsung 3508 2
Matsushita
3042 3
Philips
2709 4
Sony
1652 5
LG Electronics
1424 6
IBM
1213 7
Toshiba
1177 8
Epson
1119 9
Samsung SDI
1052 10
Canon
940

6. Patentees and Category of Patents
Qualified applicant and patentee classified by nationality
Chinese
Foreigners
Invention
Any new technical solution relating to a product, a process or improvement thereof
20 years
Utility model
Any new technical solution relating to the shape, the structure, or their combination, of a product, which is fit for practical use
10 years
Design
Any new design of the 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

7. Subject Matters of Patent
Subject matters excluded from patent
Scientific discoveries
Rules and methods for mental activities
Methods for the diagnosis or for the treatment of diseases
Animal and plant varieties (except processes used in producing products)
Substances obtained by means of nuclear transformation

8. First-to-File Nation First-to-file rule
Where two or more applicants file applications for patent for the identical invention-creation, the patent right shall be granted to the applicant whose application was filed first
Filing same applications at the same day
The applicants negotiate
Prohibition of double patenting
For any identical invention-creation, only one patent right shall be granted

9. Patentability Novelty Inventiveness Formality Comparative novelty
Prior use within China establishes public knowledge
Sales outside China, regardless how long, is not novelty destroying!!!
Absolute novelty
Worldwide publications
Manner of publications
Internet publications (clarified in the revised exam. guidelines)
Inventiveness
Formality
Sufficient disclosure, support, technical characteristics and clarity

10. Examination and Grant Examination procedure
Preliminary examination
Publication at the expiration of 18 months
Request for substantive examination(within three years from the filing date)
Substantive examination
Grant or final rejection of patent application
Current patent examination status
Invention－24 months
Utility Model－11 months
Design－8 months

11. Revised Examination Guidelines
Substantive examination - how to determine
Insufficient disclosure
Lack of support
Necessary technical characteristics
Clarity of claim language
Application procedure
Divisional applications
Claim of priority
Double patenting
Invention patent application v. utility model application

12. Divisional Applications
Time to file a divisional application
Anytime while the parent application is pending
In case of allowance - within 2 months from the notice of allowance; or
In case of final rejection, within 3 months from the final rejection if no reexamination is initiated
If reexamination is initiated, any time during the reexamination proceeding
If appeal to the court on reexamination decision is initiated, anytime before the final rejection comes into effect
Time to file a sub-divisional application
The parent application is still pending; or
The office action indicates the absence of unity in the divisional application

13. Protection of Patent Right
Scope of protection of patent right
The extent shall be determined by the terms of claims.
The description and the appended drawings may be used to interpret the claims
Equivalent rule
the extent of protection of patent right includes the extent determined by the technical features equivalent to the necessary technical features

14. Issues in US-origin Applications
CSPTAL
Issues in US-origin Applications
Incorrect inclusion of unpatentable subject matter
Business method, computer software
Failure to utilize novelty standard
Failure to observe formality rules in submission in China
“Lack of support” objections
Fewer embodiments v. broader claims
“Insufficient disclosure” objections
Less experimental data to prove the effect of invention
Short prior art description
US has IDS

15. Support by the Description
“The claims shall be supported by the description” (article 26 of the patent law)
Meaning: there should have sufficient number of examples in the description to support the generic term used in the claim, so as to enable those skilled in the art to carry out all the Inventions covered by the generic term and achieve the objects of the invention
If a claim includes a step of “heating the raw materials at a temperature of 50 to 900℃”, to support this generic term
The description should include at least two embodiments with heating temperatures at 50℃ and 900℃ respectively
A third embodiment with a temperature between 50 and 900℃ provides a full support to the claim

16. Practical Tips China has a stricter requirement on support
No new examples are allowed to be added into the description
To overcome the objection
Include more than one embodiment for any generic term in the claim
Provide technical description for any feature to be claimed
Argue that claims are entitled to appropriate generalization derived from the entire description
Argue from the technical point of view and cite prior art references to support the generalization
Supplementary examples, although no entry, may influence the Examiner’s decision
Examination results of foreign equivalent applications may also influence the Examiner
Narrow claims to a less generic term

17. Supplemental Experimental Data
For the rejections regarding “not support by the description” and “insufficient disclosure”, the supplemental examples and experimental data filed after filing date will not considered by the examiner.
Only for the rejections involved in inventive step, the supplemental effect data filed after filing date can be considered by the examiner.

18. CSPTAL
Overall Suggestions
Consider prosecution history estoppels in making amendments and arguments
Tendency to take path of least resistance
They should argue more
Communicate well with patent office
Exchange views with the examiner
Make necessary concession
Engage reexamination procedure
Include useful dependent claims
More ammunition in invalidation proceedings

19. Proposed Revision to Patent Law
Filing in China first for an invention made in China
For article 20, “any Chinese entity or individual” is revised to “any entity or individual”
For article 64, “where any entity or individual, in violation of the provisions of article 20 of this law, files first in a foreign country an application for a patent for invention made in China, no patent right shall be granted for an application filed in China for the above invention”
Absolute novelty standard (articles 22 and 23)
For invention and utility model patents, prior art means that, before the date of filing, technology publicly disclosed in publications or publicly used or made known to the public by any other means in the country or abroad

20. Proposed Revision to Patent Law
Enhanced patent enforcement provisions
Grant patent administrative department a compulsory power in investigation, seal up, seizure and confiscation (article 57)
Add pre-suit evidence preservation and provision of laches (articles 60-62)
Inclusion of doctrine of equivalence and estoppels
These doctrines are codified from current judicial interpretations

21. Proposed Revision to Patent Law
Statutory damage award
Up to RMB1,000,000 from RMB500,000
Clarification on non-infringement acts
Allowing parallel import
Clarifying source and range of prior use
Clarifying concept of scientific research and experimentation
Allowing the use of an expiring drug patent for purpose of submitting information required in administrative approval for entering the market after the expiry of the patent

22. Concerned Provisions Compulsory licensing Right of co-owner of patent
Articles 14, 48, 52(A3)
Right of co-owner of patent
Genetic resources
Article 25 re acquisition or exploitation
Article 26 re identification of source