Patent options in China
What kind of patent protection exists in China?
In China, there are three forms of patent protection:
- Invention patents, which are granted for technical innovations that are practical, inventive and new.
- Design patents, which are granted to protect the shape, colour, or combination of both of an object.
- Utility model patents, which are granted for technical solutions related to the shape or structure of an object.
Are patents registered in Canada valid in China?
Patents are territorial rights, meaning that a patent in Canada has no effect in China. To ensure that your innovations are protected in China, you will have to ensure you also file for an appropriate patent in China.
How do I file to protect my patent in China?
In China, patents are administered by the State Intellectual Property Office (SIPO). You can either file directly to SIPO in China, or through the Patent Cooperation Treaty method. In China, patents are granted on a first-to-file basis, which means that all else being equal, the party that files the patent first will obtain the patent. Granting of an invention patent can take 3-4 years, whereas design and utility model patents can take approximately 18 months.
What if I can no longer file an invention patent on my innovation?
Sometimes your original invention is no longer valid for a patent, but it may be possible for your innovation to be protected by China’s utility model patent. A utility model patent demands a lower level of inventiveness and does not require a substantive examination by the patent office. As a result, utility model patents may be able to protect other minor innovations around your key invention, thereby thwarting would-be competitors or imitators. You can also file for a utility model patent at the same time that you file for an invention patent, which would offer protection sooner as the utility model patents are normally granted quicker than invention patents. Finally, some innovations may have a short lifespan, which makes a utility model patent suitable due to its speed and cost advantages.
Besides registering my patent, are there other considerations I need to be aware of?
While it is important to protect your company’s own innovations, it is just as important to ensure that you are not infringing on a Chinese party’s patents when you enter the market. China’s pace of patent filings is increasing dramatically, especially in terms utility model patents. Since utility model patents do not require any substantive examination, and are cheaper and quicker to file, there are a significant number of utility model patents out there and you will want to take precautions to make sure that you are not infringing another party’s rights.
Do I need a lawyer to register my patent?
Patent registrations and procedures are complex no matter which market you are in, and it is no different in China. Of note, a number of foreign companies' patent cases lost in Chinese courts are simply a result of the quality of the patent application content. Canadian companies looking to protect their IPR through patents are urged to do more than simply translate their English or French applications into Chinese. Be sure that you are working with experienced legal counsel that can guide you through China’s unique patent environment. Please see the Recommendations for protecting your intellectual property rights in China page for a list of third-party service providers.