PATENTS

Q1. Could a Chinese translation of PCT application be filed after completing formalities of entering into Chinese national phase?

A:

No. According to Rule 104 of the Implementing Regulations of the Patent Law of the PRC, a Chinese translation of the description and the claims of the initial international application must be filed at the time of entry. Otherwise, the entry is not effective. Therefore, it is essential to file a request of entry together with the translation for completing the entry formalities.

It should be noted that, according to Rule 103 of the Implementing Regulations of the Patent Law of the PRC, applicant must go through formalities (including submitting a translation of the descriptions and claims) of entering a PCT application into the Chinese national phase within 30 months from the priority date. If the formalities of entry cannot be completed by the 30-month deadline, a 2-month period of grace is available, namely the translation must be filed at the latest by the end of 32 months from the priority date.

Q2. What extra fees will incur for a PCT application entering the Chinese national phase?

A:

Applicant of a PCT application entering the Chinese national phase should pay an additional official fees for descriptions (including drawings) exceeding 30 pages at a rate of CNY50 per page, and for claims at a rate of CNY150 per claim over 10. It should be noted that according to the current practice in China, the additional fee will be charged according to the description and claims in the initial PCT application rather than amendment made when or after entering the Chinese national phase.

Q3. How to record a transfer of patent application/patent in the CNIPA？

A:

An assignment signed by both assignor and assignee must be filed together with a request of changing the applicant/patentee with the CNIPA.

The following scenario should be noted. If A and B are both applicants/patentees of a patent application/patent, and B will assign the patent application/patent to C while A will still be the co-owner, then A must sign as both assignor and assignee in the assignment. Namely, the assignor should be A and B and the assignee should be A and C.

Q4. When can a divisional application be filed at the latest?

A:

According to Rule 43 of the Implementing Regulations of the Patent Law, a divisional application must be filed before any of the following dates in which:

1) parent application is granted—in this case, a further divisional application is normally not available after grant of the parent application, unless examiner indicates claims of a filed divisional application still lack unity;

2) rejection of the parent application becomes effect, i.e., deadline of filing an administrative litigation against the decision of the reexamination; and

3) withdrawing of parent application becomes effective.

For filing a divisional application, the applicant should prepare a set of claims in the divisional application which may comprise either the whole set of pending claims in the parent application or a part thereof. It should be noted that the CNIPA takes a strict examination standard on the claims in a divisional application as to whether they go beyond initial disclosure of the parent application. Please take this practice into your consideration when preparing the claims.  

Q5. What is a design/utility model patent evaluation report for?

A:

In China, a design application or a utility model application will be granted a patent right without being subjected to a search, provided that it meets formality requirements. On the other hand, the Patent Law of the PRC applies novelty/inventiveness requirement on design/utility model patent. Accordingly, whether a design/utility model patent complies with the novelty/inventiveness requirement is actually indeterminate. Therefore, when patentee wants to enforce right of a design or utility model patent, whether in administrative or judicial way, or even trying to stop sales of products infringing design/utility model patent in e-commercial platform, it is required for the patentee to submit such a patent evaluation report, which is generated by the CNIPA under the patentee’s request.

It will take about two months to obtain a patent evaluation report upon receiving the patentee’s request and payment of a fee.

Q6. Can an owner of a pharmaceutical patent request extension of duration of the patent right?

A:

According to Article 42, Paragraph 2, of the latest version of the Patent Law of PRC, where a patent for an invention is granted after the expiration of four years from the filing date and three years from the date of requesting substantive examination, the patentee may request extension of patent duration for unreasonable delay during the examining process of the invention, except that the unreasonable delay was caused by the applicant.

Furthermore, according to Article 42, Paragraph 3, of the Patent Law, in order to compensate for the time in the review and approval of new drugs, the CNIPA shall, at the request of the patentee, grant compensation for the duration of patent rights related to new drugs that have been approved for marketing in China.  The period of compensation shall not exceed five years, and the total effective patent term of a new drug after its approval for marketing shall not exceed fourteen years. 

However, since the Implementing Regulations corresponding to the latest version of the Patent Law has not yet been issued, although patentee can file a request for extension of term of the patent right, the request will not be examined before the issuance of the latest version of the Implementing Regulations. According to the CNIPA’s advice, the request should be submitted within three months from the date of grant of patent, or within three months from the date of approval for marketing.

Q7. When a PPH request can be filed for a Chinese patent application? What document should be filed?

A:

A PPH request can be filed simultaneously with a request of substantive examination, or after a patent application enters substantive examination procedure and before the issuance of a first office action.

If the granted claims in the counterpart foreign application are different from the pending claims in the Chinese application, a set of Chinese claims corresponding to the granted claims of the counterpart application should be submitted. The amendment can be filed either with the request of substantive examination and PPH request, or otherwise filed within three months after receipt of a Notification that the application enters substantive examination procedure.