Briefing on National PhaseEntry of a PCT Application in China

Guichao MENG/Yan GONG

With the strengthening of IP protection in China, an increasing number offoreign companies become interested in filing patent applications in China.PCT is an importantway that foreign companies may want tochoose. This is to give yousome practical ideas about how to proceed with the national phase entry of a PCT application in China.

First of all, the time limitationfor entering the national phase in China is 30 months from the earliest priority date. It is possible to obtain an extension of two months by paying a surcharge of RMB 1000 for the late entry.If the applicant fails to enter the national phase within this time limit, the effect of his PCT application in China will cease, and there is no way to revive theright.

A Chinese translation of the PCT application documents is always necessary upon entry.Late filing of the Chinese translation is not accepted.

Upon entry, the applicant is required to indicate what the application type is, ieinvention or utility model. The main differences between the above two types are shown below.

Type
Item / Invention / Utility Model
Subject / Product, Method / Product( Shape, Structure)
Substantive Examination / Required / Not required
Duration / 20 years / 10 years

When entering the national phase in China, the applicant has an opportunity to amend his application documents according to Article 28 or 41 of PCT. Any amendment that goes beyond the disclosure in the international application as filedis unacceptable.

In China, additional claim fee should be paid for each claim in excess of 10.Some applicants want to amend the claims in order to reduce the number of the claims when entering the Chinese national phase. However, reducing the number of the claims upon entry does not help the applicant to save cost, because, in China,claim fees are calculated on the basisof the number of claims in the International Publication rather than that in the Amendments.

After entering the Chinese national phase, if the applicant wants to accelerate the examination of his Chinese application, filing a PPH request will probably be a good choice. There is IP5 PPH Pilot Programmelaunched by the IP5 Offices, iethe European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the State Intellectual Property Office of the People’s Republic of China (SIPO) and the United States Patent and Trademark Office (USPTO). Aseparate PPHPilot Programmebetween the SIPO and one foreign Patent Office is also available,such as the German Patent and Trade Mark Office (DPMA), the Intellectual Property Office of the United Kingdom (UKIPO), and the Canadian Intellectual Property Office (CIPO).

For filing a PPH request,the SIPO requires that:

  1. All claims in an SIPO application, either as originally filed or as amended, must sufficiently correspond to one or more of those claims determined to be patentable/allowable in the corresponding application filed with another IP5 Office;
  1. If an applicant would like the SIPO to use the PCT international work product from another IP5 Office, all claims for examination under the PCT-PPH must sufficiently correspond to one or more of those claims indicated to be patentable/allowable in the latest international work product of the corresponding international application by the EPO, JPO, KIPO, or USPTO as ISA/IPEA;
  1. The SIPO application must have been published;
  1. The SIPO application must have entered into the substantive examination stage.As an exception, the applicant may file a PPH request simultaneously with the Request for Substantive Examination.
  1. By the time of request for the PPH, the SIPO should have not begun examination of the application. In other words, the applicant should have not received any office action issued from the substantive examination departments in the SIPO before, or when, filing the PPH request.

To meet the first requirement,the applicant may need to amend the claims in the SIPO application.Besidesthe opportunity for making voluntary amendments, the applicant is allowed to make amendments to the application documentswhen filing a request for substantive examination or within three months after receiving the Notice of Invention Patent Application Entering into Substantive Examination Stage.

Hence, it would probably be better to defer filing a request for substantive examination if an applicant intends to make amendments to the application documents after filing. Furthermore, if the applicant does not satisfy with the final claim scope and wants to reenter his invention into the examination procedures at the SIPO, he may consider filing a divisional application.The applicant can certainly file a divisional application for other reasons.

In China, a divisional application may be filed at any of the following time:

▪any time from the filing date to the due date specified in the Notification to Go through Formalities of Registration;

▪any time from the filing date to the expiration of three months after the receipt of the Decision of Rejection;

▪any time after filing a Request for Reexaminationor during the initiation of the administrative litigation against the Decision of Reexamination;

▪ any time within three months after receipt of the Decision of Reexamination if the Reexamination Board upholds the Decision of Rejection;

▪any time within two months after receipt of theNotification that Application Deemed to be Withdrawn.

For filing a divisional application, it is required that the application type (invention or utility model) of the divisional application should be identical with that of the initial application, andthe divisional application should not go beyond the scope of disclosure contained in the initial application.

(The authors are from CHINA PAT INTELLECTUAL PROPERTY OFFICE, which has been ranked as top ten PCT filing firm for the past five years.CHINA PAT INTELLECTUAL PROPERTY OFFICE provides domestic and foreign clients with high quality IP-related services including patent and trademark prosecution, IP enforcement, litigation, etc.)

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