We mentioned in more than one of our previous articles that you need to register your trademark in China ASAP, as China is a “first to file” country (you may check :How to Get Back My Trademark in China? for more information). Then here comes the question: what about patent registrations? Does China apply a “first to file” principle in patent registrations, too?
Yes, the first to file principle also applies to patent registrations. More than that, as patent means something novel, something that has not been disclosed to the public anywhere in the world, it means the timing for filing the application is very important. Now, we are going to share our tips with regards to registration of a patent particularly today.
1. Submitting your patent application simultaneously around the world
Unlike a trademark registration, if any identical or similar trademarks have been applied or registered previously, your application will not be granted. The most important thing about a patent registration is that it has to be something that has not yet been disclosed to the public before you file for a patent.
Disclosed to public, not only means that you have already sold it and exposed it by advertising, but also exposed it by applying for a patent in any other country in the world.
Yes, you get me correctly, applying for a patent is also a kind of exposure. However, according to Article 29 of Patent law of the PRC: “Where, within twelve months from the date on which any applicant first filed in a foreign country an application for a patent for invention or utility model, or within six months from the date on which any applicant first filed in a foreign country an application for a patent for design, he or it files in China an application for a patent for the same subject matter, he or it may, in accordance with any agreement concluded between the said foreign country and China, or in accordance with any international treaty to which both countries are party, or on the basis of the principle of mutual recognition of the right of priority, enjoy a right of priority.” So, if you have ever filed a patent application in any other country, you should file for it in China before this six or twelve months elapse.
Then what if you missed the deadline? We understand that there is no substantial examination for a design patent and utility model patent application, so if you apply for these two patents in China after the deadline and claimed that you never did any previous application outside of China, you probably might get your application granted. However, if your previous application in other countries has been reported to the patent office by any of your competitors, your patent will be invalidated right away.
The following are our step-by-step tips:
1） Making a list
While still working on your patent, you had better figure out the plan for future protection. Make a list of the jurisdictions in which you think you want to be protected, for example, you either want to outsource the manufacture of your product in China, or want to sell your product in China someday, it’s highly recommended to include China in the list.
2） Finding the suitable patent lawyers
Once the list is made up, talking to your lawyer who helps you handle the patent application. Ask if he/she know any lawyer in those jurisdictions, as most lawyers probably have connections in other countries more or less. Anyway, try to find lawyers in all jurisdictions and talk with them until you are sure that they can help you.
Please understand different countries have different requirements over the paperwork for patent application even if the product is actually the same, and it takes time to understand the exact requirements and have proper paperwork to be prepared. That’s why we suggest you reach out to find the suitable lawyer first, before you start your application in any country.
3） Start the application at the same time
Once you complete step 1 and step 2, all you have to do now is to start the application procedure at the same time once you are ready for a patent application.
2. Type of patents in China
The Chinese IPR protection system has been developed in the recent 30 years, which of course, is built on international practice. But still there is something unique. Understanding this kind of uniqueness and the differences from other legal system will help us to understand how to do a better job in protecting your IPRs in China.
According to the Patent law of the PRC, there are three kind of patens in China: design, utility model and invention.
1) Design
Design is defined as the shape, pattern, or the combination thereof, as well as the combination of color with shape and pattern which is aesthetically appealing and suitable for industrial applications. The main difference between a design and invention or utility model is that design focuses on the artistic and aesthetic creation over the exterior appearance of a product. However, it is not a simple handicraft, it must have the practicality that can be applied on an industrial basis.
The protection object of a design patent is the product’s decorative or artistic appearance, which can be a flat pattern, or a three-dimensional model, actually more common, the combination thereof.
2) Utility model
Utility models are new, practical technical solutions regarding to the shape, construction, or combination thereof of a product. Like inventions, utility models protect a technical solution. However, the scope of protection of utility model is narrow, it only protects new product with a certain shape or structure, can’t protect methods and substances without fixed shapes. Compared to inventions, utility models focus more on practicality, while its technical level is comparatively lower. In most countries, utility model patent will be granted to relatively simple, or improved technology inventions, which is usually called “small inventions.”
Substantive examination is not needed for granting of a utility model patent, thus the application procedure is relatively simple, and the cost is low. For small inventions on tangible products, such as daily necessities, machinery, electrical appliances etc., application for utility model patents is more suitable.
3) Invention
An invention is a new technological solution proposed for a product, method or improvement, which can be a product invention or a method invention. Method invention includes all methods of using the laws of nature, and can be divided into manufacturing methods and operational methods, such as the invention of processing methods, manufacturing methods, test methods or product use methods.
An invention patent can be granted to a solution of method or a solution of software, which does not reflect a change in shape or structure of a product, while a utility model patent can only be granted to change in shape and structure. The most important thing is, compared with all existing technology, inventions must have outstanding substantive features and significant progress.
4）Differences
Design patents are essentially designed to protect artistic ideas, while invention patents and utility model patents protect technical ideas. Though both designs and utility model are related to the shape of a product, the purpose of these two patents is different. Design is to ensure the product to be aesthetic, while utility model is intended to enable a product to solve a technical problem.
For example, if the shape, pattern and color of a table lamp is quite beautiful, then a design patent should be applied for. If the design (particularly the structure) of the table lamp is streamlined and reasonable, for example, save materials or more durable, then a utility model should be applied for. In another words, design focus on how the table lamp looks, utility model focus on how the table lamp functions.
Again, the example of a lamp, it’s Edison who invented the electrical lamp. What he provided, is a creative technological solution which brings light to the world, which is called an invention. Based on his invention, stable lamp, floor lamp etc. are all utilities. You may check the following chart for the main differences:
3. Tips for patent applications
1) Finding a suitable agent
All overseas company or individuals need to hire a local agent to submit their application for patent to the State Intellectual Property Offices (SIPO) and all application material must be in Chinese.
As in almost all service sectors in China, the difference in service fee for patent application is sometimes exaggerated. Though high fees don’t mean a high level of service, but low fees are always related to a low level of service. You have to make sure the agent includes all points you want to have protected in your application, so this agent needs to understand your intention thoroughly and then expresses your intention accurately in a way up to the examiner’s requirements.
The more experienced an agent is, the better he understands the requirement (no matter it’s something on paper or something between the lines)， thus the more expensive the fee. When choosing the professional service provider, comparing the fee level instead of focus on the level of service is really not a smart move for all business, the same reason has been explained thoroughly in one of our post: Why A Good Accountant Is So Important
2)Term and maintaining fees
After the patent has been granted, the patent holder needs to pay annual fees in time to maintain the validation of the patent, otherwise, the patent will be invalidated six months later. Of course, your agent is supposed to remind you of the payment in time.
In China, the term for a utility model is 10 years, for a patent is 20 years. According to the newly amended patent Law of the PRC, the term for a design is extended to 15 years. All terms can’t be renewed.
