PCT National Phase: China




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Filing
A national phase application must be submitted within 30 months of the PCT priority date. A two month extension is possible however, conditional upon payment of additional fees. The documentation required for filing a patent or utility model application includes: Power of Attorney, filing form, the claims, specifications and figures, and either a copy of the International Search Report or the Priority Certificate (Priority Claims based on the Paris Convention are recognized). The majority of the documents must be supplied at the time of filing. The exceptions to this rule are the Power of Attorney and the International Search Report and/or Priority Certificate, both of which may be submitted within several months of the Chinese application filing date. The Power of Attorney must be the original and not a copy. If it is not supplied at the time of filing, the Chinese Patent Office will issue an Office Action after approximately a month. The applicant must respond with the Power of Attorney within a period of two months. If the applicant does not respond within the allotted time, a second Office Action will be issued. Failure to respond to this second Action within the two month time period will result in dismissal of the application. It is important to be aware of one limitation when choosing between filing a patent, or a utility model application; while it is possible to file applications for both, and later withdraw one, switching between the two is not permitted.

Formality Examination
A preliminary examination of the application is conducted, and where deficiencies are discovered, amendments will be requested. Failure to respond to a request within the time limit will result in withdrawal of the application.

Publication of the Unexamined Application
Not to be confused with the PCT Publication of the International Application, ‘Publication of the Unexamined Application’ here refers to the publication of the PCT national phase application in Chinese. For those also wishing to acquire the patent for Hong Kong, the application procedure must be completed within 6 months of this publication date.

Request for Examination
A substantive examination, in which the invention is analyzed for novelty, inventive step etcetera, may be requested within 3 years of the PCT International Application Filing Date or the Priority Date. When submitting a request for examination applicants are required to pay an examination fee and produce copies of any related documents published prior to the Chinese application date (Patent Law of the People’s Republic of China, Article 36). This information disclosure should include the following documents:
(1) Prior Art Literature (2) Search Reports conducted on the said patent by Patent authorities in other countries (3) Results of Examinations conducted on the said patent by Patent authorities in other countries.
Substantive Examination
The examiners of the Chinese Patent Office will examine the application to determine whether to grant or refuse a patent. If the following conditions are met, a patent will be granted.
The relevancy of the invention proposed for patent: an invention is defined as ‘advanced creative exercise of technical thought making use of the laws of nature’. Novelty Originality Utility First-to-file rule the patent will granted to the precedential application Reasons for refusal on the grounds of irrelevancy are listed below a) Inventions contravening public order and good morality, or inventions not in the best interests of the public b) Scientific discoveries c) Intellectual laws or methodology d) Computer programs e) Method of surgery, treatment and examination of human beings f) Animal or plant species (methods for manufacturing products composed of these are patentable) g) Material Produced by means of nuclear transmutation Intellectual activity involves human processing of, or response to, information and does not utilize technology or laws of nature. Accordingly, it cannot be considered to have the technological characteristics necessary to qualify for patent. Business models fall into this category of non-patentable invention.
Argument or Amendment
Applicants who have received a notice of Office Action are given the opportunity to respond with an argument or amendments that are within the scope of the specifications submitted in the International Application. For PCT based applications, this is also a chance to rectify errors that occurred in the translation process, thus reducing the risk of translation based errors. The applicant may submit preliminary amendments at the time of requesting examination, or within three months of receipt of the Notice of Commencement of Examination.

Decision to Grant a Patent/ Decision of Refusal
If as a result of the examination of the amendments and/or arguments submitted by the applicant the examiner judges the reasons for withholding grant of a patent to be resolved, a patent will be issued. If however, the reasons for refusing to grant a patent detailed in the Office Action are considered to be unresolved, a Decision of Refusal will be issued. If there are objections to this decision, it is possible to request a re-examination.

Registration
Provided that the applicant pays the registration fees within two months of receiving the notice of Decision to Grant a Patent the patent will be registered and a copy published under the patent number. A Chinese patent has a lifetime of 20 years, calculated from the date of filing the PCT International Application. The results of the substantive examination conducted by the Chinese authorities also apply in Hong Kong, meaning that provided that the applicant has an existing application with the Hong Kong authorities, and pays the registration fees within 6 months of receiving the Chinese Patent Office decision to grant a patent, a Hong Kong based examination will not be required. It must be noted however, that should the results of the Chinese examination be negative, the inverse of the rule applies: the invention will not be eligible for patent.