China implemented the fourth amendment to its Patent Law, which came into effect on 1 July 2021. The amended Implementing Regulations and Guidelines took effect on 20 January 2024. This fourth round of amendments introduced several positive elements for foreign applicants.
Procedural Changes
Restoring Priority
In line with patent practices in the UK, European Union, and US, the amended Patent Law states that if an applicant fails to file a Chinese invention/utility model patent application within 12 months of the priority date, the applicant retains the option to apply for the restoration of the priority date within two months after the end of the 12 months, provided that a justifiable reason can be provided.
- Paris Convention Route: Priority can be restored within 2 months from the 12-month deadline.
- PCT Route: The restoration of priority made in the PCT international phase has been admitted. If priority was not restored in the PCT international phase, it can be restored within 2 months from CN entry.
This is the first time applicants can enjoy a priority claim for late-filed applications in China.
Claim additions or corrections
This allows for correcting or adding a priority claim after filing the Chinese application. A request to do so must be made within four months of applying or 16 months of filing the earlier application, whichever is later.
Incorporation by reference
Clarifies that when any part of the claims, specifications, or drawings of an invention or utility model patent application is omitted or incorrectly submitted at the time of filing, the applicant may make a supplementary application within two months after filing or within a specified period, through incorporation by reference to a prior application. This is permitted, provided the current application claims priority from the previous submission and the omitted or corrected content is included in the preceding application. Furthermore, incorporation during the PCT international phase is also allowed.
Deferring Examination
Applicants can request a deferral of examination and withdraw the deferral request before the expiration of the deferred period.
- Invention (can be deferred for 1 – 3 years, submitted a request for examination),
- Utility Model (can be deferred for 1 year, submitted at filing),
- Design (can be deferred up to 36 months monthly, submitted at filing).
Applicants may consider deferring the application examination and request to withdraw the deferral at any time before the expiration of the deferred period. This would help the applicant better manage the examination and layout of the patent applications.
Procedural Adjustments
15-day rule abolished
For all documents filed electronically, this will provide a shortened response period, which begins the day after it has been dispatched and simplifies the calculation of deadlines. This exception does not apply to documents that are sent through the post.
Colour drawings
For the first time, colour drawings are also allowed in China; the applicant may consider submitting colour drawings to show the associated contents clearly.
Word Count
The word count of the invention title has increased from 40 to 60 words, which will help the applicants summarise the patent invention.
Inventorship
It clarifies that the applicants may submit the change of inventors within one month of receiving the filing receipt, with a declaration signed by all applicants and inventors before and after the change. This provides clear guidance on changing inventorship with a definite deadline.
Computer-Implemented Inventions
The subject matter of a computer-implemented invention is no longer required to be tangible. It can now include software distributed through online downloading. For example, computer program products are now eligible as subject matter for computer-implemented inventions.
Claim drafting examples are presented for reference as follows.
- A method for removing image noise, including: …
- The method of claim 1, further including: …
- The method of claim 1, wherein …
- A computing device including a memory, a processor and computer programs stored on the memory, wherein the processor is configured to execute the method of any one of claims 1-3.
- A computer readable storage medium having instructions stored thereon, wherein the instructions, when executed by a processor, cause the method of any one of claims 1-3 to be performed.
- A computer program product comprising instructions, wherein the instructions, when executed by a processor, cause the method of any one of claims 1-3 to be performed.
The information processing method involving diagnosis is now an eligible subject matter if a computer implements all its steps.
Claim drafting examples are presented for reference as follows.
- A computer-implemented method for identifying arrhythmia type based on ECG signals.
- A computer-implemented method for predicting chances of survival after lung cancer surgery by analysing clinical data after surgery.
PTA and PTE
The amended Patent Law introduces a compensation system for the duration of invention patent rights. It provides corresponding patent term compensation for unreasonable delays caused by non-applicant reasons during the authorisation process, better safeguarding the legitimate rights and interests of patent owners.
Patent Term Adjustment (PTA)
PTA is designed to compensate patent holders for delays in the patent examination process, ensuring they receive the entire patent term they are entitled to.
PTA applies to an invention patent granted after four years from the filing date and after three years from the date of requesting substantive examination.
The patentee can request PTA within three months from the patent’s grant date.
The term of the PTA is the period between the grant date of the patent and the later of either four years from the filing date or three years from the date of requesting substantive examination, minus any reasonable delay by the CNIPA and any unreasonable delay caused by the applicant.
Patent Term Extension (PTE)
Patent Term Extension (PTE) is available to compensate for the time needed to obtain administrative approval to market new drugs in China.
The amended Implementing Regulations and Guidelines define a “new drug-related invention patent” as a product patent, preparation method patent, or medical use patent for the active pharmaceutical ingredient (API) contained in a “new drug.” A “New drug” eligible for PTE in China must be new to the world, meaning that the product’s New Drug Application (NDA) must be filed in China before it is approved for marketing in any other country.
The PTE term equals the date the new drug was approved for market in China minus the filing date of the Chinese patent minus five years. The maximum PTE is five years, and the total effective patent term after drug approval for marketing shall not exceed 14 years. PTE is applied in addition to any PTA (patent term adjustment).
Design-Related
Partial Designs
Partial design protection brought Chinese practice in line with many other major jurisdictions, such as the US and Europe. This will aid foreign applicants, as they are no longer required to remove dashed or dotted lines when extending a partial design application to China.
The claimed portion of partial design should form a relatively independent area on the product or constitute a relatively complete design unit. Partial design is not patentable if it is only a design of a pattern or a combination of pattern and color on the surface of a product.
The amended Implementing Regulations and Guidelines clarify the requirements for filing documents for partial design applications. In particular, views of the product as a whole are still needed to file the partial design. The applicant should use a combination of dashed lines presenting the disclaimed portions and solid lines presenting the claimed portions or cover portions of the product with translucent colors to indicate the disclaimed portions and reveal the claimed portions in the title and brief description of the application.
Graphical User Interface (GUI) Design
GUI design is not patentable if it is a game interface and pattern displayed on display devices that have nothing to do with human-computer interaction.
Under the amendments, the GUI design is not required to be affixed to the product and can be filed without involving the product. Only views of the GUI are allowed to be filed.
The applicants are requested to indicate the primary purpose/use of the graphical user interface in the title.
Hague Agreement
Foreign applicants may find the Hague system more attractive when obtaining international design protection, given that international design patent applications are now also allowable in China under the Hague Agreement.
The international registration date is the national filing date for the corresponding Chinese design patent application, and the CNIPA will accept the priority claim made at the international stage.
International design patent applications shall be examined based on provisions in Chinese Patent Law.
Analysis
It is evident that amendments to China’s patent law have been introduced: more comprehensive priority rules to make the application procedure more flexible, a deferred examination mechanism that benefits applicants in aligning with market dynamics, patent term compensation aimed at better safeguarding the legitimate rights and interests of patent owners, and new regulations regarding computer-implemented inventions designed to align closely with technological trends, as well as more appealing design practices for foreign applicants. To a certain extent, the revisions to the new Patent Law draw upon international patent systems and rules, thus aligning China’s patent practices more with international trends.
While not comprehensively covered in this article, the revisions to the new Patent Law address several key aspects. An electronic system has been implemented, allowing applicants to submit applications flexibly. Furthermore, enhanced priority rules have been introduced, facilitating more adaptable operations. A deferred examination system has also been established to better align with market dynamics. Regarding examination, the accuracy rate for closing cases has notably improved, and the examination cycle has been reduced. Concerning rights protection, the patent term compensation for pharmaceutical patents is highly focused, reasonably extending the protection period. The revisions of the new Patent Law draw upon advanced international patent systems and regulations, aligning China’s patent system more closely with global standards.
