The Chinese Patent Office. Should I apply for a Chinese patent? The answer to this has been steadily changing over the years. The questions (and answers) can be broken up into questions and answers about 1) patent prosecution, and 2) patent litigation.
I am going to focus on the prosecution question because I now have some experience with that question as I have been able to successful argue several Chinese applications to grant. I have no experience with litigation and so will leave that answer to others.
First some background. It was not that many years ago that many U.S. companies simply did not file applications in the Chinese Patent Office. The simple answer most of them gave was - "It will not be enforceable." Following that lead I filed few Chinese applications in the early years of my practice and often advised clients not to bother.
That has changed. More and more American (and other countries) companies recognized the Chinese governments pledges to enforce intellectual property rights and those same companies have also recognized that phenomenal growth of the Chinese economy. The result - a very large increase in filings in China.
The Chinese Patent Office is often referred to as SIPO (State Intellectual Property Office). SIPO is one of the biggest and busiest patent offices in the world in terms of the volume of applications it deals with. Hundreds of thousands of patent applications are filed with SIPO every year, including invention, utility model and design patents. It appears that SIPO is striving to become one of the leading patent offices in the world, not only in terms of volume of applications, but also in terms of quality and speed of examination.
My experience to date has been very positive, and I have had encounters with several very competent examiners, who have all been quite technically astute about some complicated technologies.
There are some issues that requires special care in the Chinese Patent Office. I will mention some of them here.
Quality
Based on conversations with my foreign associates (the patent attorneys or agents who represent me before SIPO) the State Office has taken the position that in the past Chinese patents were too easy to get. And to improve the quality they have adopted a policy of maintaining the rejection rate at a certain level. Most patent office claim that they do not do this but in fact I imagine it is one of the simplest ways to raise the quality level.
Final Rejection
According to the Guidelines for Examination, examiners should normally issue two office actions before a final rejection ending the prosecution of an application. If an applicant wants to continue prosecution after that rejection, it has to file a re-examination with the Patent Re-examination Board. The Guidelines for Examination also allow examiners to reject an application after issuing a first office action, if the applicant makes no amendment and does not present persuasive arguments.In the past, if the examiner raised objections to several claims in the first office action and the applicant only made formal changes to the claims, it could still get another chance. However, this practice is no longer possible. Currently, the applicant has to either make substantive changes to the claims or give convincing arguments. Otherwise, the application will be rejected. Recent experience shows that if the applicant does not satisfy the examiner in all the issues raised in the first office action, some examiners choose to reject the application. So responses to first office actions should be done with care in light of this new trend.
New Matter
If you are familiar with European Patent Office practice you know already know that any amendment that an applicant makes during a prosecution should not go beyond what is recorded in the original application document, which for many filings is the PCT application. My experience to date is that the Chinese Patent Office is considerably stricter on this than the EPO.
I have already encountered examiners that flatly required in amendments that I must use exact language out of the specification in claim amendments to ensure that the claim can be directly and unambiguously determined from the specification by a person of skill in the art. This is much stricter than many patent offices and will often force the applicant into narrower claims than otherwise.
I have heard (not experienced) that strict enforcement of this standard has resulted in applicant's not being allowed to correct obvious typographical errors. Be very careful in writing your PCT.
Non-Patentable Subject Matter
What about software and business methods? In many countries as long as a claim has hardware features in it, it will not encounter a non-patentable subject matter objection. In the Chinese Patent Office however, when judging whether a claim is for non-patentable subject matter, the claim is considered as a whole as a solution to a problem. If the solution is regarded as technical, the claim claims a patentable subject matter. The term ‘technical’ is not explicitly defined. However, the Guidelines for Examination prescribe that if a solution involves the execution of computer programs in order to solve technical problems, and uses technical means in conformity with the laws of nature and achieves technical effects in conformity with the laws of nature, it is a technical solution.
But the key phrase here is "conformity with the laws of nature". If the solution in the claim is based on man made rules rather than a law of nature, even if the claim includes hardware features, it will be regarded as non-patentable matter. So a claim that uses computer algorithms to choose insurance products for instance would be rejected. At the same time I have had success getting successful grants on software controllers for chemical plants and oil refineries. In that case the software controllers were developed using identification techniques that measured the response of the processes to measured disturbances - which were responding to laws of nature.
So I have found the Chinese Patent Office to be a good experience, but it keeps me on my toes in certain areas and definitely requires that I carefully construct my PCT application. And I would not waste my client's money going after business method patents.
The Chinese Patent Office
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Mike Ervin
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