Filing Patents in China
Upon filing an original patent application, various options are available by which one may file patent applications in other countries of interest.
One could file a Patent Cooperation Treaty (PCT) application within one year which allows over 120 countries to be designated in one application. The applicant must then decide within 30 months from the original filing in which countries to enter ‘national phase.’ It is important to note that the PCT application does not result in the grant of an International Patent. The International application has to be converted into national and regional patent applications all of which will be subject to individual examination, and an agent must be retained for each application.
For many individuals and corporations it is very important to carefully select the right countries/jurisdictions in which to file a patent application, as fees have to be paid in each country/jurisdiction. One of the most important considerations when deciding on the countries/jurisdictions in which to file a patent application is whether the invention will be patentable in the country or jurisdiction of interest. In most jurisdictions, an invention is considered patentable if it is patent subject matter, new, not obvious, and useful. For example, in the case of software, while many of the 176 countries in the world that grant patents permit patenting of software-related inventions, each country has it’s own test for whether a software invention is patentable subject matter. As an example, in Europe, it is necessary for software to have a "technical effect" in order to be considered patentable.
One country that has seen a rapid increase in the number of patent applications that have been filed is China. In 2005, there were over 450,000 patent applications filed in that country. To put this number into perspective, this is comparable to the number of patent applications filed in the U.S., and many times greater than the roughly 40,000 patent application filed in Canada annually.
In China, there are three types of patents: invention patents; utility model patents; and design patents. Invention patents last for 20 years from the date of filing, whereas utility model and design patents last for 10 years from the date of filing. Utility model patents are designed to protect simpler creations or improvements related to physical objects.
The grant of a patent in China confers upon the owner the right to exclude others from making, using, offering for sale, selling and importing the patented invention. Although the potential to enforce patent rights remains a concern in China, commentators have pointed out that court orders to stop potential infringes are now easier to obtain. While it remains to be seen as to how enforcement mechanisms progress, as China has a very large and developing consumer base, many companies are entering the Chinese market rather than adopting a wait and see approach.
Ebad Rahman is a Toronto-based lawyer with the Intellectual Property law firm of Bereskin & Parr. He can be reached by phone at (416) 364-7311 or by e-mail at firstname.lastname@example.org. This article is intended to provide general information regarding intellectual property and should not be considered legal advice.