Required documents for Patent registration in China:
1) POA duly signed, we will prepare it for you and scanned copy will be sufficient.
2) Specification, Drawings, Abstract,etc.
3) Assignment (if applicant is not inventor)
Filing Requirements for Patent in China:
1) Information of the applicant(s) and inventor(s), including name, address, nationality;
2) A scanned copy of the executed Power of Attorney, simply signed.
3) Priority document and application data including filing number and date of the first basic application; a certified priority document must be filed within 3 months from the date of filing the Chinese application.
4) Specification, Title, Drawings, Abstract, ISR, etc.
Patent Invention registration procedure in China:
The Intellectual Property Office of China (SIPO) will performs a preliminary examination within 18 months of the filing/priority date (earlier if so requested by the applicant), followed by a substantive examination commenced at the applicant’s request.
In addition, if at least one claim of the foreign equivalent is determined to be patentable in the Office of First Filing (ie, the foreign patent office), the patentee can apply for expedited examination in China under the Patent Prosecution Highway.
The simple application procedure in China:
Step 1: Preparing and filing a patent application in China（Specification must be in Chinese）;
Step 2: Late filing any documents needed, if any;
Step 3: Receiving a notification on passing the preliminary examination (for invention only);
Step 4: Filing request for substantive examination (for invention only);
Step 5: Receiving a notification on publication and start of substantive
examination stage (for invention only);
Step 6: Receiving office actions;
Step 7: Responding to office actions;
Step 8: Obtaining official notice of allowance or receiving decision of rejection;
Step 9: Having a patent registered and obtaining patent certificate (If the patent application is allowed); and
Step 10: Paying annuities each year.
Annuity of the year of granting patent will need to be paid at the time of registration. Annuities would have to be paid each year after finally granted.
Normally, the timeframe for Invention patent is from 2 to 3 years, approximately (without requesting early publication or accelerating examination etc.) and Utility Model and Design are frim 12 to 14 months, approximately.
Design Applications in China
For a design application to be filed in China, it is required to submit the following:
1. Two sets of drawings or photographs (if color is claimed, it is required to submit two sets of colorful photographs) to the State Intellectual Property Office of China. For that purpose, please provide us with four sets of drawings or photographs for one design case.
The following information is also required at the time of filing a design case:
1. Priority Right data (if any to be claimed).
2. Name, address and nationality of each designer.
3. Name, address, nationality and residence of each applicant.
4. Title of article.
5. Locarno Classification of the article to which the design applies.
If priority is claimed, a certified copy of the priority document is required to be submitted within three months from the Chinese filing date. However, in order to avoid any extra late filing fees.
We recommend submitting the certified copy of the priority document as well as the executed Power of Attorney at the time of filing. In addition, if the applicant of the Chinese design application is different from that of the priority application, it is also required to submit Assignment.
Timing for filing Patent applications in China:
Filing patent applications through Paris Convention, due date:
* If no priority is claimed: as soon as possible.
*If priority is claimed: Invention: within 12 months from the earliest priority date; Utility Model: within 12 months from the earliest priority date; Design: within 6 months from the earliest priority date.
Entering the PCT patent applications into the Chinese national phase, due date:
*Invention: within 30 months from the earliest priority date or international filing date without priority;
*Utility Model: within 30 months from the earliest priority date or international filing date without priority.
It is possible to obtain a two-month grace period and enter the Chinese national phase within 32 months from the earliest priority date or international filing date without priority.
Trademark Law in China
Legal basis is the Trademark Law, in force since August 23, 1982, third amendment on May 1, 2014. The fourth amendment came into effect on November 1, 2019.
China is a member of the Madrid Agreement and the Madrid Protocol.
Trademark protection is obtained by registration. However, the existing trademark law protects unregistered trademarks if the mark is recognised as a well-known mark in China.
Even after the commission of Hong Kong to China, there is a separate trademark law in Hong Kong („Trademarks Ordinance“). IP rights registered in China will not be automatically protected in Hong Kong and vice versa. The same applies for Macau.
Nice classification, 11th edition. Special Chinese goods and services are included. Multiple-class applications are possible but single-class applications are often recommended.
Filing Requirements for Trademark Applications in China:
(1) Detailed descriptions of goods or services to be covered.
* The China trademark office is quite strict on the specifications for goods and services. In general, only the goods and services published by the China trademark office can be accepted.
(2) If the applicant is a company, one copy of the company's certificate of incorporation with the company seal or the representative’s signature thereon is required. It is sufficient to send us the certificate of incorporation with company seal or the representative’s signature scanned in a color PDF format.
* The English translation of the certificate of incorporation is necessary when it is in other foreign languages.
(3) If the applicant is an individual, one copy of the applicant’s passport with the applicant’s signature thereon is required. It is sufficient to send us the applicant’s passport with the
applicant’s signature scanned in a color PDF format.
(4) One original Power of Attorney simply signed by the individual applicant or the representative of the applicant. Neither notarization nor legalization is required. It is sufficient to send us a signed POA scanned in a color JPG format.
* The company seal and/or the representative’s signature have to be in consistent between the company's certificate of incorporation and Power of Attorney.
* The company seal should not be affixed on any content of the Power of Attorney.
(5) An electronic file of the trademark logo (.jpg).
(6) Applicant’s name, address and nationality as well as name of the representative thereof in print.
(7) Chinese characters for filing particulars of the applicant and the representative, if any.
(8) The explanation of the trademark name in the application is required if it has meanings and definitions.
(9) A certified copy of the corresponding application in case priority is claimed.
* The color scanned copies or the electronic files(.PDF) of the priority documents
issued by the foreign trademark offices are both acceptable for the China trademark office.
* If the priority document is on the late-filed basis, the original hard copy will be required. Please note the priority document has to be filed within 3 months from the filing date.
* The English translation of the priory document is necessary when it is in foreign languages.
* The information of the priority application, including country/territory, filing date and fling number, has to be provided when filing if the original priority documents have to be supplemented after filing within three (3) months from the filing date.
(1) The priority claim have to satisfy all of the following requirements:
* The trademark name/logo of the trademark application to be filed in China is exactly the same as that of the prior trademark application.
* The goods/ services of the trademark application to be filed in China is exactly the same as that of the prior trademark application.
(2) The priority document can be late-filed within three (3) months from the filing date. In this situation, the original hard copy of the priority document will be required.
Trademark Registration procedure in China:
*The application is filed before the Trademark Office.
*An official filing receipt will be available in about 4 months as from the filing date after the application goes through the formality check, and then substantive examination may last no more than 9 months.
* Examination, publication and opposition against a trademark application in China undergoes formal examination and substantive examination on absolute and relative grounds.
* If the Trademark Office does not object to the application or its office actions (the first could be issued in approx. 4 to 6 months as from the filing date) are overcome, the trademark will be published in the Trademark Gazette for opposition for 3 months. If no opposition is filed against the trademark during the publication period, or if the opposition fails, the Trademark Office publishes the registration in the Trademark Gazette and issues the registration certificate in about 2 months thereafter.
*The processing time from first filing to registration or first office action is 12-18 months if it goes smoothly.
National Opposition Period
The opposition period is 3 months from publication of the trademark application.
Validity term and trademark renewal:
A trademark in China is valid for ten (10) years from the date of registration. A renewal application has to be filed within twelve (12) months prior to the date of expiration. A grace period of six (6) months is allowed by paying a corresponding surcharge. A trademark may be renewed each time for a period of ten years.