Chinese and U.S. patent prosecution have significant differences. By being aware of these differences, U.S. patent attorneys can speed up prosecution, attain stronger patent protection and potentially reduce associated costs.
1, National Phase Entry Deadline
The deadline to enter the national phase in China is 30 months. However, this deadline can be extended as a matter of right to 32 months with the payment of a 1,000 RMB fee (about $150). However, unlike the U.S., this deadline cannot be extended further with a showing of unintentional abandonment.
Also note that translations must be provided at the time of filing and cannot be filed later as in the U.S. Accordingly, applicants should give their foreign associates plenty of time to translate their application.
2, Reducing Claim Fees
Claim fees at national phase entry are based on the number of claims published in the Patent Cooperation Treaty application. Reducing the claims at filing will not reduce the claim fees due. Accordingly, Applicants may wish to file their PCT application with fewer claims (i.e., 10 are included in the China filing fee) and list any deleted claims as examples to be added back in later. Surprisingly, there are no additional claim fees for adding claims in a voluntary amendment, potentially leading to significant filing fee savings as each additional claim over 10 is 150 RMB (about $22). For example, an application filed with 10 claims and 20 claims added later via voluntary amendment would save almost $500 in additional claim fees.
3, Choosing Type of Application
Unlike the U.S., China offers both utility models and invention patents (similar to U.S. utility patents). UMs can offer significant advantages over invention patents in exchange for a shorter patent term (half of an invention patent term) including quicker grant (since there is no substantive examination) and invalidation protections since there is a lower bar for inventive step. However, at national phase entry, applicants must choose one or the other. To have the best of both worlds, applicants should consider filing UMs and invention patent applications simultaneously via the Paris Convention at 12 months, as discussed further in the next section.
4, Filing UM and Invention Patent Applicants Simultaneously in China
For “products” (generally, mechanical inventions), applicants can file both a utility model and invention patent simultaneously by the 12-month priority date. By filing both (they must be filed on the same day), applicants can get quick patent protection via the UM (often within a year or less of filing) while their invention patent applications are still pending (often for years).
If the UM and invention patent have the same scope, then the applicant must abandon one or the other when the invention patent is to grant. Oftentimes, due to amendments to the invention patent application during prosecution, scopes are different so abandonment is not required. If abandonment is required, usually, applicants will keep the invention patent due to the longer term (20 years vs. 10 years) and much of the UM term may have already passed. While the invention patent may have a narrower scope than the UM due to amendments made during prosecution, the invention patent may also have a better chance of surviving invalidation proceedings since it has been substantively examined.
UMs aren’t for all inventions. UMs have limited subject matter eligibility. UMs can be granted only for products. The products “shall be objects manufactured by industrial methods, having definite shape and structure, and occupying a certain space.” Accordingly, mechanical inventions can usually be protected via UM but not methods, chemicals/pharmaceuticals, software, etc.
Due to an increased focus on patent quality, chances are increasing that an examiner will issue a substantive rejection for some UMs (e.g., those that appear to be blatant copies of prior inventions).
The additional fees for filing UMs are minimal-just foreign associate’s fee for formatting and filing the UM and the China intellectual property office official fees including filing fee of RMB 500 (about $75) and grant fees of RMB 200 (about $30). There should be no additional translation fee since the UM can use the same translation as the invention patent application.
5, Voluntary Amendments: Adding New Claims and Claim Fees
Unlike the U.S., adding new claims (and amending on applicant’s initiative) in Chinese invention applications is only allowed at specific times: (1) at initial filing; (2) when filing a request for substantive examination; (3) within three months from receipt of notice of entering substantive examination from the China National Intellectual Property Administration. As mentioned above, there is no CNIPA fee for adding claims during voluntary amendment after initial filing.
For UMs, applicants can file voluntary amendment within two months from the filing date or date of entry of national phase.
For quicker prosecution in Chinese applications claiming priority to U.S. applications, we recommend amending Chinese claims to match examined U.S. claims since oftentimes, Chinese examiners will repeat rejections raised in the priority application in addition to performing their own search and examination.
Generally, Chinese patent examiners will usually not allow an applicant to add claims during an office action response per Chinese patent examination guidelines. Instead, an examiner will issue a new OA rejecting the added claims, thereby delaying a potential grant of any allowed claims. Applicants can, however, amend claims in response to rejections raised by examiners.
6, Antecedent Basis
Chinese examiners are strict on antecedent basis. An examiner usually requests the Applicant to recite exactly identical terms as the previously presented term. For example, if a base claim recites “a metal film resistor,” the applicant should recite in dependent claims “the metal film resistor” instead of simply “the resistor” even if there is only one resistor recited in claims.
7, Lack of Literal Support
Chinese examiners are strict on literal support. The examiner may object to applicant’s replacement and/or deletion of quantifiers or adjective in claim amendment. For example, if a claim recites “three cylinders,” and the description and drawings recite and show, respectively, three cylinders, an examiner is unlikely to accept amending claims to replace “three” with “a plurality” despite three being a plurality. Similarly, replacing “three” with “at least two” would probably also not be acceptable.
While it is common U.S. practice to minimize preambles to simply “a system” or “a method,” CNIPA examiners generally require applicants to recite the technical field in the preamble. For example, CNIPA examiners may not accept “a method” but would be more likely to accept “a method of signal processing.”
9, Divisional Applications
Unlike in the U.S., it is generally not possible to file divisional applications (equivalent to continuation or divisional applications in the U.S.) of divisional applications. That is, unlike the U.S., applicants cannot usually have a long chain of divisional applications in China. Generally, divisional applications can only be filed when the original Chinese application is still pending. The only exception is when there is a unity rejection in a divisional. Accordingly, to keep a patent family pending, Applicants may try to force a unity rejection in a divisional by filing multiple independent claims with a different “special technical features” in each independent claim (different novel and inventive limitation in each independent claim).
10, Making Sure to Work With Chinese Counsel
Due to the differences between U.S. and Chinese patent practices, especially in formality issues, it is advisable to allow the Chinese counsel to review and amend the claims to comply with Chinese practice for formality issues, such as antecedent basis, at the time of filing the response.
Further, the applicant’s Chinese counsel is suggested to conduct a telephone interview with the examiner to clarify rejections and sound out proposed responses before filing the response to Office Actions.
In conclusion, by following the above strategies, the applicant can smooth patent prosecution through CNIPA. Further, the applicant should consider taking advantage of the Patent Prosecution Highway program to expedite examination. Finally, as examination is not automatic but must be requested, applicants should consider requesting examination at filing to speed prosecution.
Xia Wu is a co-auther on this article. Xia Wu is a patent attorney at Chofn Intellectual Property Service Co. Ltd.