Patents

Application

Entry into Chinese national phase of a  PCT application 

Procedures:
Procedures for entry into Chinese national phase of a  PCT application include entering, preliminary examination, publication, substantive examination and grant. It is necessary for the applicant to file a request for examination as to substance within 3 years from the earliest priority date. But it is suggested to file the request for Examination at the same time of filing, so as to accelerate the application process. The duration of the patent right for an invention will be 20 years counted from the date of filing.
 
Requirements:
1) A letter of instruction to China indicating the name(s), address(es) and nationality(ies) of applicant(s) and the name(s) of inventor(s) and the CHINESE translation thereof so as to avoid any possible different versions (if the applicant does not have a Chinese name, we can do the transliteration);
2) Original Power of Attorney executed by the applicant(s), which is neither necessarily notarized nor legalized and can be late furnished after filing within the time limit specified by the Patent Office (Power of Attorney is herewith attached);
3) International Publication pamphlet;
4) International Preliminary Examination Report with annex (if any);
5) Any amendment concerned if the applicant would like to bring such amendment into the examiner’s consideration during the examination on the application in China.
 
Industrial Design Applications in CHINA
 
Procedures:
The procedures for a design application include acceptance, preliminary examination and grant, which usually takes  6~7 months. Validity of registered design lasts for 10 years and annual fees have to be paid in advance within the month before the expiration of the preceding year. 
 
Requirements:
1) Representation of the subject matter of the design in form of drawings (preferable in .dwg format) or photographs (six-side views plus a Perspective View) in triplicate.
2)  A letter of instructions indicating the name(s), address(es) and nationality(ies) of applicant(s) and the name(s) of inventor(s) and the CHINESE translation thereof, so as to avoid any possible different versions (if the applicant does not have a Chinese name, we will do the transliteration);
3) Power of Attorney executed by the applicant(s), which is neither necessarily notarized nor legalized and can be late furnished after filing within the time limit specified by the Patent Office (POA form is herewith attached);
4) Priority Certificate;
5) Description of the subject matter of the design if desired.
 
Notes:
According to the Chinese Patent Law, a design patent application shall be limited to ONE design incorporated in ONE product. Only for the designs which are incorporated in products belonging to the same class and are sold or used in sets may be filed as one application.
 
 Utility Model Applications in China
 
Procedures:
The procedures for Utility Model application include acceptance, preliminary examination and grant, no substantive examination is required. The duration of patent right for Utility Model or Design is 10 years counted from the filing date.
 
Requirements:
1) A letter of instructions indicating the name(s), address(es) and nationality(ies) of applicant(s) and the name(s) of inventor(s) and the CHINESE translation thereof so as to avoid any possible different versions (if the applicant does not have a Chinese name, we can do the transliteration);
2) Power of Attorney executed by the applicant(s) for EACH application, which is neither necessarily notarized nor legalized and can be late furnished after filing within the time limit specified by the Patent Office (Power of Attorney forms for conventional application and for National Phase application are herewith attached);
3) Priority Certificate (if any);
4) Description, claims and drawings, etc in English.
Re-examination
The legal basis:
The procedure of reexamination is established according to Article 41 of the Patent Law. The Patent Office shall set up a Patent Reexamination Board. Where any party is not satisfied with the decision of the Patent Office rejecting the application, or the decision of the Patent Office revoking or upholding the patent right, such party may, within three months from the date of receipt of the notification, request the Patent Reexamination Board to make a reexamination. The Patent Reexamination Board shall, after reexamination, make a decision and notify the applicant, the patentee or the person who made the request for revocation of the patent right.

Procedures:
The Patent Reexamination Board shall remit the request for reexamination, which the Board has received to the examination department of the Patent Administration Department under the State Council, which has made the examination of the application concerned to make an examination. Where that examination department agrees to revoke its former decision upon the request of the person requesting reexamination, the Patent Reexamination Board shall make a decision accordingly and notify the requesting person.
The applicant may, at the same time, make requisite amendments to the application documents to overcome the deficiencies as pointed out in the rejection reasons to facilitate the Board to revoke the rejection made by the examiner.
Where, after reexamination, the Patent Reexamination Board finds that the request does not comply with the provisions of the Patent Law and these Implementing Regulations, it shall invite the person requesting reexamination to submit his observations within a specified time limit. If the time limit for making response is not met, the request for reexamination shall be deemed to have been withdrawn. Where, after the requesting person has made its observations and amendments, the Patent Reexamination Board still finds that the request does not comply with the provisions of the Patent Law and these Implementing Regulations, it shall make a decision of reexamination to maintain the earlier decision rejecting the application.

Where, after reexamination, the Patent Reexamination Board finds that the decision rejecting the application does not comply with the provisions of the Patent Law and these Implementing Regulations, or that the amended application has removed the defects as pointed out by the decision rejecting the application, it shall make a decision to revoke the decision rejecting the application, and ask the examination department which has made the examination to continue the examination procedure.
On receiving an unfavorable decision on reexamination issued by the Patent Reexamination Board, the applicant can institute legal proceedings at the court within three (3) months from the date of receipt of the notification. The People's Intermediate Court of the Municipality of Beijing shall be the 1st Instance Court, while the Higher Court of the Municipality of Beijing, the 2nd Instance Court.

Requirements:
1) A request for patent reexamination.
2) reasons, relevant materials, evidence

Change and related fees
Change and related fees
 

1) any change in the name, nationality and address of the patentee.          RMB500 yuan
2) any change in the Agency and attorney.                                              RMB  50 yuan

Assignment and related fee

The legal basis:
"The right to apply for a patent and the patent right may be assigned.
Any assignment, by a Chinese entity or individual, of the right to apply for a patent, or of the patent right, to a foreigner must be approved by the competent department concerned of the State Council.
Where the right to apply for a patent or the patent right is assigned, the parties shall conclude a written contract and register it with the Patent Administration Department Under the State Council. The Patent Administration Department Under the State Council shall announce the registration. The assignment shall take effect as of the date of registration." (Chinese Patent Law, Article 10)

Requirements:
1) Power of Attorney
2) Assignment Contract

Fee:
RMB500yuan

License

The legal basis:
"Any entity or individual exploiting the patent of another shall conclude with the patentee a written license contract for exploitation and pay the patentee a fee for the exploitation of the patent. The licensee has no right to authorize any entity or individual, other than that referred to in the contract for exploitation, to exploit the patent." (Chinese Patent Law, Article 12)
"After the publication of the application for a patent for invention, the applicant may require the entity or individual exploiting the invention to pay an appropriate fee." (Chinese Patent Law, Article 13)
"Where any patent for invention, belonging to any state-owned enterprise or institution, is of great significance to the interest of the State or to the public interest, the competent departments concerned under the State Council and the people's governments of provinces, autonomous regions or municipalities directly under the Central Government may, after approval by the State Council, decide that the patented invention be spread and applied within the approved limits, and allow designated entities to exploit that invention. The exploiting entity shall, according to the regulations of the State, pay a fee for exploitation to the patentee. Any patent for invention belonging to a Chinese individual or an entity under collective ownership, which is of great significance to the interest of the State or to the public interest and is in need of spreading and application, may be treated alike by making reference to the provisions of the preceding paragraph." (Chinese Patent Law, Article 14)

Requirements:
1) Recordal Application Form
2) The counterpart of License Contract
3) Photography of Patent Certificate or Notice of Acceptance of Patent Application.
4) The Identity Certificate of Assignee and Assignor
5) Power of Attorney
6) Other required documents

Official Fee
Item
 
I   Patent for Invention
101.  Filing an application (including publication fee)
102.  Filing a PCT application for national phase entry
    a) Filing Fee (including publication fee)
    b) Surcharge for late national phase entry within the 
        grace period
    c) Revising Chinese translation (during preliminary   
       examination)
    d) Revising Chinese translation (during substantive   
       examination)
   e) Restoring an invention unsearched in the international 
       phase
    f) Correcting priority claim simultaneously with the entry
103.  Filing a divisional application
       (including publication fee)
104.  Additional charge for specification including drawings
        in excess of 30 pages, per page
        in excess of 300 pages, per page
105.  Additional charge for claims
        in excess of 10, per claim
106.  Filing request for earlier publication
107.  Filing request for substantive examination
108.  Filing request for re-examination
109.  Patent certificate fee (including printing fee and
        stamp tax)
110.  Filing request for revocation
111.  Filing request for invalidation
112.  Fee for deposit of microorganism for 30 years
     a) Microorganisms (per strain)
     b) Cell lines, animal and plant viruses (per strain)
113.  Fee for viability report
     a) Microorganisms (per strain)
     b) Cell lines, animal and plant viruses (per strain)
114.  Fee for providing samples of microorganisms
     a) Microorganisms (per strain)
     b) Cell lines, animal and plant viruses (per strain)
115.  Quarantine
116.  Filing request for compulsory license
117.  Filing request for adjudication on compulsory license
        fee
118.  Application maintenance fee (per annum)
119.  Annuities
        1st to 3rd year (per annum)
        4th to 6th year
        7th to 9th year
       10th to 12th year
       13th to 15th year
       16th to 20th year
120.  Delayed payment of annuity or maintenance fee
        within six months
 
121.  Delayed submission of PCT application text in
        Chinese
Official Fees
RMB
 
950
 
950
 
1000
 
300
 
1200
 
900
300
 
950
 
50
           100
 
           150
-
2500
1000
255
 
30
3000
 
US$500
US$700
 
US$50
US$70
 
US$30
US$50
US$50
300
300
 
300
 
            900
1200
2000
4000
6000
8000
          +25%
surcharge
 
300
Item
 
II   Patent for Utility Model
 
201. Filing an application
202.  Filing a divisional application
203.  Filing a PCT application for national phase entry
    a) Filing fee (including publication fee)
    b) Surcharge for late national phase entry within the
        grace period
    c) Revising Chinese translation
    d) Restoring an invention unsearched in the international
       phase
    e) Correcting priority claim simultaneously with the
       entry
204.  Additional charge for specification
       (including drawings)
       in excess of 30 pages, per page
       in excess of 300 pages, per page
205. Additional charge for claims
       in excess of 10, per claim
206. Filing request for re-examination
207. Patent certificate fee (including printing fee
       and stamp tax)
208. Filing request for revocation
209. Filing request for invalidation
210. Filing request for compulsory license
211. Filing request for adjudication
       on compulsory license fee
212. Annuities
       1st to 3rd year (per annum)
       4th to 5th year
       6th to 8th year
       9th to 10th year
 
213. Delayed payment of annuity
       fee within six months
 
III  Patents for Design
 
301.  Filing an application
302.  Filing a divisional application
303.  Filing request for re-examination
304.  Patent certificate fee (including printing fee
        and stamp tax)
305.  Filing request for revocation
306.  Filing request for invalidation
307.  Annuities
        1st to 3rd year (per annum)
        4th to 5th year
        6th to 8th year
        9th to 10th year
 
308.  Delayed payment of annuity fee within
        six months
 
Official Fees
RMB
 
 
500
500
 
500
 
1000
300
 
900
300
 
 
 
50
100
 
150
300
 
205
20
1500
200
 
300
 
600
900
1200
2000
 
+25%
surcharge
 
 
 
500
500
300
 
205
20
1500
 
600
900
1200
2000
 
+25%
surcharge
Item
 
IV  Fees in General
 
401. Late filing application documents and references
402. Receiving and forwarding official documents
403. Registration of change of bibliographic data for  
       agency
404. Registration of change of bibliographic data for inventor, applicant, and patentee
405. Claiming priority
    a) Claiming single conventional priority
    b) Additional charge for each additional priority
406. Filing a request for exception to loss of novelty
407. Interview with examiner
408. Providing a certified copy of Chinese patent    
       application
409. Filing request for extension of time limit (for the same
       notice or office action)
      The request for the first extension (per month)
      The request for the second extension (per month)   
410. Recording a license contract
411. Recording a transfer of a patent right
412. Recording a transfer of a pending application
413. Translation fee (per 100 original words /characters)
    a) From English into Chinese
    b) From Japanese into Chinese
    c) From German, Russian or French into Chinese
    d) From Chinese into English
    e) From Chinese into Japanese
    f)  From Chinese into German, Russian or French
414. Typewriting
       per page of English
       per page of Chinese
415. Copying, per page
416. Making drawings (per piece)
    a) Drawing against a draft
    b) Correcting a formal drawing
    c) Preparing a drawing
417. Making photo (per piece)
418. Restoring right
419. Preparing observation on the office action
420. Assuming representation during
       re-examination,revocation or invalidation
421.  Withdrawing a patent application
 
Official Fees
RMB
 
 
-
-
50
 
200
 
 
80
80
-
-
20
 
 
 
300
2000
-
200
200
 
-
-
-
-
-
-
 
-
-
-
 
-
-
-
-
1000
-
 
-
-
Patents in Hongkong

General Information:
There are two types of patent in the HKSAR, i. e, standard Patent and short-term Patent.
The Hong Kong Registered Design Ordinance also provides for a design registration.

Standard Patent

Application procedure involves two stages:

1. Application shall be filed to one of the following designated Patent Office, namely, UK Patent Office, European Patent Office and Chinese Patent Office. The Application then Files a request to record for the patent (designated patent) to the Hong Kong Patents Registry after 6 months from the date of publication, together with a photocopy of the designated patent and the information of the inventor(s) (see section 15 of the Patents Ordinance). A filing fee and an advertisement fee shall be payable within 1 month after the Earliest filing with the Registrar.
2. A request for registration and grant shall be made within 6 months after the date of grant of the designated patent by the designated Patent Office. Every such request shall be filed with a verified copy of the published specification of the designated patent (see section 23). A filing fee and an advertisement fee shall be payable with 1 month after the earliest filing with the Registrar.
After examination by the Registrar, the designated patent is register and granted as such. A certificate will be issued to the application and the patent will be published in Gazette.

Notes:
1. Applicants cannot directly file standard patent applications with Hong Kong Patent Registry.
2. Validity of standard patent lasts for 20 years and maintenance fee is payable for published standard patent in which no request has been made for registration (see section 33). Renewal fee is payable after the patent is granted (see section 39).
3. The application period before the grant of patent is comparatively longer than that of registered designs.

Short-term Patent
Applicant could directly file application with Hong Kong Patents Registry. Upon application specification with drawings, an abstract and a search report issued by the prescribed international search authority or designated Patent Offices shall be submitted. A filing fee and an advertisement fee shall be payable with 1 month after with the earliest filing with the Registrar (see section 113 of the Patents Ordinance).
After examination by the Registrar, the designated patent is registered and granted as such. A certificate will be issued to the application and the patent will be published in Gazette.

Notes:
1. Validity of short-term patent lasts for 8 years and renewal fee is payable within the 3 months ending with the expiry of the 4th year (see section 126).
2. The application period before the grant of patent is comparatively shorter than that of standard patents.

Registered Design
Application could directly file application with Hong Kong Designs Registry (see section 12 of the Registered Designs Ordinance)/
After examination by the Registrar, the designated patent is registered and granted as such. A certificate will be issued to the application and the aptent will be published in Gazette.

Notes:
Validity of registered design lasts for 25years and renewal fee is payable every 5 years see section 28).

Patents in Macao

General Information:
There are three categories of patents: Inventions, Utility, and Industrial Designs and Models in Macao.

Registration of Utility Patents
 
Process of the application:
- The applicant should complete the Utility Patent Registration Application Form in Chinese or Portuguese, and submits it to the Industrial Property Application Counter of Reception Center of MES (2nd Floor). The relevant fees together with the payment slip should be submitted and paid within 8 working days upon the application.
- If the application is in order, it will be published in the Series II of Official Gazette of the Macao SAR. In the period between the publication and the grant of the registration, any third-party may approach the MES in writing with opposition against the registration.
- The report of the examination will be written by the assigned entity.
- After the registration has been granted, the notice of grant will be published in the Official Gazette of the Macao SAR.
- Upon the end of the one-month period for appeals, or five working days after the court decision was made in the event of an appeal, the applicant should submit the original receipt of the application fees at the Industrial Property Application Counter of Reception Center of MES (2nd Floor) to obtain the registration certificate.
 
Durations:
- The duration for registration depends on the necessary time for the preparation of the report of the examination that the assigned entity needs.
The registration certificate will be issued within five working days.

Notes:
- The validity of utility patent is 10 years counting from the date of the application.
- In the following cases, the applicant or bearer of trademark should complete the form accompanying with the original of registration certificate (if applicable) and the supporting documents and then submit it to the respective unit. The respective annotation will be published in the Series II of Official Gazette of the Macao SAR and the original of registration certificate will be returned to the bearer:
o assignment of the right of utility patent;
o alteration of the name of applicant or bearer or body corporate;
o alteration of the address of applicant or bearer or body corporate.

Registration of Industrial Designs and Models

Process of the application:

-The applicant should complete the Industrial Design or Model Registration Application    Form in Chinese or Portuguese, and submits it to the Industrial Property Application Counter of Reception Center of MES (2nd Floor). The relevant fees together with the payment slip should be submitted and paid within 8 working days upon the application.
- If the application is in order, it will be published in the Series II of Official Gazette of the Macao SAR. In the period between the publication and the grant of the registration, any third-party may approach the MES in writing with opposition against the registration.
- After the registration has been granted, it will be published in the Official Gazette of the Macao SAR.
- Upon the end of the one-month period for appeals, or five working days after the court decision was made in the event of an appeal, the applicant should submit the original receipt of the application fees at the Industrial Property Application Counter of Reception Center of MES (2nd Floor) to obtain the registration certificate.
 
Durations:
- The registration will be granted within 12 months after the publication.
- The registration certificate will be issued within five working days.
 
Notes:
- The validity of industrial design and model is 25 years counting from the date of the application. Within the final six months of the registration validity, the applicant should renew the registration and pay the respective renewal fee.
 - In the following cases, the applicant or bearer of trademark should complete the form accompanying with the original of registration certificate (if applicable) and the supporting documents and then submit it to the respective unit. The respective annotation will be published in the Series II of Official Gazette of the Macao SAR and the original of registration certificate will be returned to the bearer:
Assignment of the right of utility patent;
Alteration of the name of applicant or bearer or body corporate;
Alteration of the address of applicant or bearer or body corporate

Registration of Invention Patents

Process of the application:
- The applicant should complete the Invention Patent Registration Application Form in Chinese or Portuguese, and submits it to the Industrial Property Application Counter of Reception Center of MES (2nd Floor). The relevant fees together with the payment slip should be submitted and paid within 8 working days upon the application. If the application is in order, it will be published in the Series II of Official Gazette of the Macao SAR. In the period between the publication and the grant of the registration, any third-party may approach the MES in writing with opposition against the registration.
- The report of the examination will be written by the assigned entity.
- After the registration has been granted, the notice of grant will be published in the Official Gazette of the Macao SAR.
- Upon the end of the one-month period for appeals, or five working days after the court decision was made in the event of an appeal, the applicant should submit the original receipt of the application fees at the Industrial Property Application Counter of Reception Center of MES (2nd Floor) to obtain the registration certificate.
 
 Durations:
- The duration for registration depends on the necessary time for the preparation of the report of the examination that the assigned entity needs.
- The registration certificate will be issued within five working days.

Notes:
- The validity of Invention Patent is 20 years counting from the date of the application.
- In the following cases, the applicant or bearer of invention patent should complete the form accompanying with the original of registration certificate (if applicable) and the supporting documents and then submit it to the respective unit. The respective annotation will be published in the Series II of Official Gazette of the Macao SAR and the original of registration certificate will be returned to the bearer:
Assignment of the right of invention patent;
Alteration of the name of applicant or bearer or body corporate;
Alteration of the address of applicant or bearer or body corporate.

Patents in Taiwan

General information
There are three categories of patents: Inventions, Utility Models, and Designs, wherein substantial examination must be conducted for Inventions and Designs such that patent rights may be granted, on the other hand, no substantial examination is conducted for Utility Models.

Priority Claim
According to Taiwan patent Law, a foreign applicant may claim for priority on the basis of a corresponding foreign application only if all of the following requirements are met:
a. the 1st patent application has been filed by the applicant in a member of the World Trade Organization
b. the country of the corresponding application provides mutual treatment to Taiwan nationals;
c. Taiwan application is filed within twelve (12) months for Invention/Utility Model applications and six(6) months for Design applications from the priority date;
d. A claim of priority is simultaneously made on the filing date of Taiwan application; and
e. The certified copy of the corresponding application is submitted within four(4) months from the filing date.
Currently, Australia, Germany, Switzerland, Japan, France, Liechtenstein, the United States, the United Kingdom, Austria, Paraguay, New Zealand, the Netherlands, El Salvador, the Republic of Costa Rica, Guatemala, Nicaragua, and EPO have mutual treatment to Taiwan nationals for patent applications and thus the applications in these countries may claim priority for their patent applications in Taiwan if the above requirements are met.

Duration:
The term of an Invention patent extends from the publication date to 20 years from the effective filing date. The term of a Utility Model or New Design patent extends from the publication date to 12 years from the filing date.

Filing Requirements:
a. Specification, claims and drawings if any, in foreign language (2copies);
b. Information of full name, address and nationality of the inventors and applicants;
c. Filing date and filing number of the corresponding foreign applications;
d. Assignment signed by the inventor(s), if applicable;
e. Power of Attorney signed by the Applicant(s);
f. Certified copy of the priority documents if priority is claimed; and
g. Chinese specification (2 copies).
In order to obtain an effective filing date, items (a) and (b) are required and facsimile copies of items (d) and (e) are acceptable for foreign applicants. The other documents/information should be submitted within four(4) months from the filing date.

Examination:
Please notice that examination as to form for utility model patents is instead of a substantive examination.
Formal Examination: if the application meets the minimum formal requirement, it will be given a filing date and a serial number by a notification to the applicant. The notification will also request the applicant to complete all other formal requirements within a given term.
Substantial Examination: Within 3 years from the filing date of a patent application, the applicant (or any person) has to file a request for substantial examination for the patent application. Failing to file such a request within the stipulated deadline, the patent application shall be deemed withdrawn. If all claims are found allowable under the substantial examination, a notice of the allowance will be issued accordingly. If all or some of the claims are found unallowable or amendments of the claims/specification is necessary, an office action will be issued. The applicant must respond to the office action within a given term (60 days for foreign applicant). Then a formal decision of allowance or rejection will be issued accordingly.
If the application is rejected by a formal decision, a petition for re-examination must be filed within 60 days, and the arguments for re-examination can be submitted later on.
Appeal: If the application is still rejected under re-examination, administrative appeal, re-appeal and administrative suit are successively available.

Publication (not apply to Utility Model applications and Design applications)

A patent application shall be laid-open after a period of 18 months from its filing date. However, if one or more priorities is/are claimed to the subject application, the publication of the subject application shall take place after a period of 18 months from the earliest priority date.

Granting Patent Right

While a patent application is approved by a written decision, it shall be published after the issue fee and the 1st annuity fee are duly paid within 3 months after receipt of the said decision. If the prescribed fees have not been paid within the deadline, no publication will be made and the patent right will not exist henceforth.

Annuity
Subsequent annuities are due before anniversary of the publication date each year with a grace period of six months with a find equal to the annuity due.

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