In 2009, approximately 300,000
applications were filed in China with about equal number of utility patents and
inventions patents. In 2011, according
to the World
Intellectual Property Indicators 2012
published by WIPO, China’s State Intellectual Property Office
(SIPO) received 526,412 applications overtaking the United States Patent and
Trademark Office (USPTO) to become the largest patent office in the world. In comparison, USPTO received 503,582 applications and JPO received 342,610 applications.
There is no sign
that the patent filing in China is slowing down. Since 2008,
China has introduced an array of incentives including cash bonuses, better
housing for individual filers and tax breaks for companies that are prolific
patent producers to encourage domestic and foreign patent filings. According
to the “National Patent Development Strategy (2011-2020)” published in
November 2012 by SIPO, China’s goal for annual patent filings by 2015 is two
million.
The
patent filing in China by foreign applicants has also seen steady increase. The reasons are twofold. First, China is the most populous country in
the world, which implies a big consumer market.
Second, a large and inexpensive talent pool in China
coupled with the increased recognition to IP rights have accelerated R&D
outsourcing to China by foreign companies.
Obtaining patent protection in China is
becoming an important corporate IP strategy.
Therefore, it is important for companies and inventors to familiarize themselves
with the basics of Chinese patent law.
Understanding the patent eligible subject matter under Chinese patent
law is a necessary first step.
There are three types of patents in China: invention,
utility model, and design. According to the Article 2 of the Patent
Law of the People's Republic of China,
invention-creations mean inventions, utility models and designs. The invention patent is similar to the utility
patent in US. The design patent is
similar to the design patent in US.
There is no US equivalent of utility model patent.
Similar to US, China grants patents to products (including
both manufactures and compositions), devices, and methods or processes. According to the
Article 2 of the Chinese patent law, inventions mean new technical solutions
proposed for a product, a process or the improvement of those; utility models mean new technical solutions proposed for the
shape and structure of a product, or the combination thereof, which are fit for
practical use; and designs mean, with respect to a product, new designs
of the shape, pattern, or the combination thereof, or the combination of the
color with shape and pattern, which are rich in an aesthetic appeal and are fit
for industrial application. Examples of
patent eligible subject matter include mechanic devices, systems, surgical tools,
implants, diagnostics tools, new chemical compounds, isolated genes (including
human genes), pharmaceutical compositions, nontherapeutic
cosmetic hair treatment methods such as giving permanent waves or dyeing, methods
of sterilization that are not directly practiced on the animal or human body,
methods of treatment and preservation of corpses, methods of measuring
physiological parameters solely for the purpose of perfecting a medical
instrument, etc.
Invention-creations that violate the law or social
ethics, or harm public interests are not patent eligible according to Article 5
of the Chinese patent law. For example, in biotech field, cloning of
human beings, commercial use of human embryos and human embryo stem cells and
their preparation are not patentable as they are considered to contravene
social ethics.
China does not grant patents on inventions that are
accomplished by relying on genetic resources that are obtained or used in
violation of the provisions of laws and administrative regulations. (See,
Article 5.) This law protecting the
generic resource in China was introduced by the Third Amendment of the Patent
Law in 2008 in response to several high profile exploitations of Chinese genetic
resource materials by both foreign academics and foreign companies in the early
2000s. The term “genetic resources” refers
to any materials of human, animal, plant, microbial or other origin contain
functional units of heredity and having actual or potential value. The term “inventions that are accomplished by
relying on genetic resources” means inventions which are accomplished by
exploiting the hereditary function of the genetic resources. When an applicant claims an invention that is
accomplished by relying on a genetic resource, the applicant must indicate the
direct and original sources of the genetic resource in a special form for
disclosure of genetic resource. The form
can be filed either with the filing of the application or during the
prosecution. The direct source must be
provided. However, if the original
source is unknown to the applicant, the requirement for the original source may
be exempted with an explanation from the applicant as to why she has no
knowledge of the original source.
Similar to US, China does not allow patents on scientific discoveries, law of nature, physical
phenomena, abstract idea, mental process, and mathematical algorithms and
formula. (See, Article 25.) Therefore, the discoveries, such as electricity, electromagnetic signal, light, relativity
theory, string theory, or the first law of thermodynamics, are patent ineligible
in both countries.
Rules and methods
for intellectual activities and methods for the
diagnosis or treatment of diseases are not patent eligible in China. This differs significantly from the US
law. Specifically, business method,
which is a hotly debated topic in US, is not patentable in China. Regarding methods of treatment and diagnosis, these
subject matters are not patent eligible: dosing regiments, immunization
schedules, methods for determining risk of illness, methods for preventing
diseases, assays or tests directly leading to diagnosis such
as endoscopic and ultrasonic methods, gene screening
diagnosis, acupuncture, radiotherapy such as prophylactic
treatment, immunization schedule, methods of treating wounds, methods of
contraception, artificial insemination, and embryo transfer. However, these exclusions do not apply to
methods not directly applied on the body. For example, methods of treatment and
diagnosis applied to tissue and other biological materials isolated and
separated from the body are patentable subject matter. Methods of analysis,
treatment, and data collection as applied to the body for purposes that are not
disease related are also allowed, as are products and compounds used for
treatment and diagnosis of diseases.
Another exception is the first and second medical use
inventions written in Swiss-type claim format such as "Use of substance X
in the manufacture of a pharmaceutical drug for the treatment of disease or
condition Y", which is patent eligiblee in China.
Animal and plant
varieties are not patent eligible in China. This
exclusion is mainly directed toward organisms,
so the non-biological processes used for producing animal and plant
varieties remain patent eligible. The term “animals and
plant” includes not only common definition of animals and plants but also transgenic
or bioengineered animals and plants and living materials capable of developing
into animals and plants. The exception
is microorganism including bacteria, fungus, and virus. Microorganism isolated as a pure culture is
patent eligible in China.
China also does not allow patent on methods of
nuclear transformation and substances obtained by
means of nuclear transformation. “Methods of nuclear transformation”
refers to the process of one or more nuclear things forming one or more new
nuclear things through segmentation or polymerization, such as methods of
magnetic mirror traps and close traps for realizing the nuclear fusion reaction
and methods for realizing nuclear fission by various reactors. However, the particle acceleration methods are
included in this definition, which is therefore patent eligible. “The substances obtained by nuclear
transformation” primarily refer to various radioisotopes manufactured and
produced by accelerator, reactor or other nuclear reaction apparatus. Such isotopes are patent ineligible.
There are significant overlaps on patent
eligible subject matters between US and Chinese patent law. However, as summarized above, there are
subject matters that are patent eligible in US but not in China. However, clever claim drafting can emolliate
some of these restrictions.
Thanks for reading.
Connie
