Patent applications in China are drafted and filed by Patent Agents in China, providing effective solutions for patent filings in China by setting up and running patent law offices in China. Patent attorneys in China assist clients in registration and enforcement of patents via an efficient global network.
Patent Law in China
Patent law encourages scientific research, new technology as well as industrial progress for public good. The exclusive privileges to own, use or sell the method or the product patented is granted for a limited period of time, which stimulates new inventions of commercial utility. The cost of the grant of the domination is the disclosure of the invention at the Patent Office, which after the expiry of the fixed period of the monopoly, passes into the public domain.
Comparison of the Indian Patent Law with the Patent Laws in the Asia Pacific Regions
Patent Law in India vs. Patent Law in China
China and India amended their patent laws to fulfil the obligation of TRIPS agreement. India in 2005 and China in 2008 made their Patent Acts TRIPS compliant. The current governing laws for Patents in India is Patents Act, 1970; as amended in 1999, 2002 and 2005 read with the Patents Rules, 2003; as amended in 2005, 2006, 2012 and 2014 whereas the governing law for Patents in China is Patent Law of the PRC, 1984; as amended in 1992, 2000 and 2008 read with Implementing Regulations of the Patent Law of the PRC, 2001; as amended in 2002 and 2010.
Patentable Subject Matter in China
Criteria of Patentability in China
Subject matter eligible for patent grant and conditions of patentability in China are inventions in the form of new technical solution or improvement to a product/process which is granted by the Chinese Patent Law Regulator, i.e., the National People’s Congress, whereas in India new product or process involving an inventive step and capable of novelty and industrial application can be patented which is granted by the Indian Patent Law Regulators, i.e., The Patent Office or the Intellectual Property Appellate Board (IPAB).
Patent Filing in China
All the countries provide option of e-filing and filing of patent application in print copy at the appropriate patent office or its branches. To facilitate patent filing, China has established representative offices of SIPO at all state capitals and district headquarters, where a Chinese citizen can file his/ her patent application.
In India, while filing for patent, the applicant may file a provisional application, i.e. the summary of the invention and is filed to protect the invention at its early stage. The complete application has to be filed within a period of 12 months from the date of filing of the provisional application or else the application will be considered to be abandoned. But in China, there is no option to file for a provisional application. The applicant is bound to file the complete application at once.
Patent Prosecution in China
The most important steps during patent prosecution viz. patent filing, publication, examination, opposition and patent grant/rejection are pursued across the world. In India, the patent prosecution consists of only a single phase comprising of several steps. However, in China patent prosecution is divided into two distinct stages viz. formalities/preliminary examination stage and substantive examination stage, wherein a patent application can enter in the substantive examination stage only when it first passes the formalities/preliminary examination stage.
Patent laws in China provide various procedures to speed up the patent examination, whereas, no such options are currently available in India. India is also currently not a member of Patent Prosecution Highway (PPH), to which China is a member of. The Draft Patent (Amendment) Rules, 2015 has projected to add the provision for expedited patent examination in India.
In China, in the case of patent refusal the applicant can still recommence prosecution with the patent office through continued examination/ re-examination, and evade losing the priority date of the application, whereas in India such option is not provided.
Duty to Disclose Information Regarding Foreign Applications
Foreign Applications in China
In China, the applicants are required to disclose information regarding equivalent foreign patent applications. However, regulations in India in this context seem to be much more severe and hard to comply with. SIPO requires only the copies of priority search/ examination reports to be submitted. Whereas, in India as per the Section 8, the applicant is required to submit “detailed particulars” related to equivalent foreign application at the Indian Patent Office, irrespective of whether such information is material to patentability or not. In China failure to comply with this provision is not a ground of patent revocation after the patent grant. Whereas, in India for patent revocation under Section 64 of the Patents Act, 1970 the same can be considered as a valid ground. High Court of India has provided an important clarification that any unintentional omission of the information by the applicant shall not be treated as violation of this provision.
Patent Opposition in China
Pre-grant Opposition in China
China follows Ex-parte (by or for one party) pre-issuance submissions at the pre-grant stage, whereas, India has approved an Inter-partes (between the parties) pre-grant opposition procedure. No fee, estoppel provision and threshold to establish the proceeding are applicable at pre-grant stage in both the countries.
Post-grant Opposition in China
At post-grant stage both countries, China and India, follows Inter partes (between the parties) post-grant opposition.
Compulsory Licensing in China
Both China and India have adopted compulsory license provisions based on the justifications specified under Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement. China has prescribed thorough guidelines on compulsory license. No analogous guidelines are available currently in India.
Reporting of Working of Patents in India
Patent law in India mandates each patentee and licensee of the patent to submit each year, information about the coverage to which the patented invention has been worked on a commercial scale in India. This information is to be put forward in accordance with Form-27. Many faults however, have been observed in the format of the Form-27. Patentee who fails to abide with this requirement is legally responsible for penalty. Requirement for reporting of working of patents is not prescribed in China.
Specialized Intellectual Property / Patent Courts in China
Specific courts for Intellectual Property/Patent have been set up in China for patent litigation matters relating to patent enforcement and patent infringement. Whereas, in India at present there are no such types of courts that are established for specifically adjudicating matter related with Intellectual Property rights. Newly created Commercial Courts in India will handle Intellectual Property disputes worth less than 1,00,00,000/.
We have personally managed and delivered comprehensive execution of patent projects in Asian markets, including:
(a) Reviewing invention disclosures meant for patent filings and prepared patent eligibility reports determining if invention is patentable (New; Inventive; Useful; and practical application)
(b) Drafting and managing domestic and international patent registrations
(c) Conducting product clearance studies and preparing Freedom to Operate Opinion with FTO reports
(d) Patent Investigation and Patent Searching services
(e) Patent Claim Mapping to determine patent infringement by comparing infringing products with patent claims
(f) Assisted corporations and universities to manage all aspects of patent portfolio of various business units
(g) Working with clients to formulate internal policies and practices for invention harvesting
(h) Drafting and worldwide prosecution of patent applications
(i) Patent opposition and oral proceedings
(j) Evaluating and mitigating patent risks
(k) Monitoring technology development and competitors’ activities
(l) Advised inventors worldwide to draft, file and prosecute patent applications by providing comprehensive advice on issues of patent infringement, patentability, prior art searches, and patent licensing related transactions
We provide comprehensive Patent and Trademark legal services via our global network to create valuable patent portfolios and resolve complex patent disputes by providing patent litigation support services.
Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.
Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.
Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.
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