Patent applicationGuideline for the application of invention or utility model in China:
Application documents (including description, claims, its abstract and attached drawing)
Indication letter, to indicate the name of the invention, name and address of the applicant, name and address of the inventor, application No. and date of right of priority in the country/region of initial application need to be indicated when requesting right of priority
POA executed by the applicant, namely signed by the applicant (individual) or stamped by the applicant (juridical person) which can be submitted two months after the application date in China
Where the Chinese applicant and the applicant filled in the document of right of priority are not the same person, a certificate of transfer needs to be submitted, a photocopy of the certificate of transfer needs to be notarized, and this certificate of transfer can be submitted within 3 months after the application date in China
Where the one year right of priority has already expired but the application has not yet been made public in other application countries, the application can still be filed in China provided there is no request for right of priority.
Utility model patent application cannot request protection methods furthermore it must enclose attached drawings while invention patent applications do not need to enclose attached drawings.
If the aforesaid application documents are not available, a technical disclosure is required to be provided according to the following instructions:
(2)Background technology: indicating the comprehension of the invention or utility model, search and examination for useful background technology; if possible, citing documents which reflect these background technology;
(3)Content of the invention: Indicating the technical problem that the invention or utility model is aimed to resolve and the technical solution adopted to resolve its technical problem and making a comparison with the currently available technology, indicating the beneficial effect of the invention or utility model;
(4)Attached drawing and its explanations: providing necessary attached drawings as a supplementary to the text, visualizing directly every single technical feature and the overall technical solution and making brief explanation about each attached drawing;
(5)Specific implementation mode: describing in details the optimally selected mode of contemplated by the applicant for carrying out the invention or utility model; when necessary, making illustration.
Guideline for Patent Application for Design in China
Drawings or photographs of the design: It refers to the six sides orthographic projection view form (namely, front view, back view, left view, right view, top view, bottom view and stereoscopic view), the title of each view shall be indicated exactly under the relevant view; the size of the figure of the product incorporating the design as shown in the drawing or photographs submitted shall not be smaller than 3cm by 8cm (except for that of a long and thin article), nor larger than 15cm by 22 cm. The applicant shall, in respect of the subject matter of the product incorporating the design which is in need of protection, submit the relevant views and stereoscopic drawing or photographs, so as to clearly show the subject matter for which protection is sought. The background of the photographs shall be plain. The product and the background shall have appropriate distinction in brightness, avoiding strong light, blinking, shadow, reflection and foil. The photographs shall show the design clearly. Where a patent application for design is filed, a brief explanation of the design shall, when necessary be made. The brief explanation interprets, limits the drawings or photographs of the product, and is a concise description of the main points of the designs, the omitted views and the colors for which protection is sought. Where there are colors for which protection is sought, one set of black and white drawing and three sets of colored drawings shall be provided. Where there is no request for colors protection, the applicant only needs to provide four sets of black and white drawings.
Indication letter: Indicating the name of the invention, name and address of the applicant, name and address of the inventor. Where there is a claim for right of priority (right of priority for design is merely 6 months), please indicate the application No. and date of right of priority of the initial application in a foreign country/region.
POA executed by the applicant, which can be submitted within 2 months after the application date in China.
If the applicant in China is not the same applicant in the document of right of priority, a transfer certification needs to be submitted, and any photocopy needs to be notarized; the transfer certification can be submitted within 3 months after the application date in China.
For an application claiming right of priority, a document of right of priority attested by the country of initial application needs to be submitted within 3 months after the application date in China.
Please submit original application documents and PCT request form or the published application brochure
Photocopy of the international search report
Amended right claims according to Article 19 of the Patent Cooperation Treaty (if any)
Photocopy of the international preliminary examination report (if any)
Photocopy of PCT/IB332 form
Please note that when entering national phase if the applicant amends the description according to the Article 28 and Article 41 of the Patent Cooperation Treaty, he needs to submit any amendment to the description
POA executed by the applicant
The PCT application itself will never become a patent. Instead, the PCT application must be taken into the National/Regional Phase in those countries/regions where patent protection is to be sought. This must be done by the appropriate deadline. Each of the resulting individual National/Regional Phase patent applications is then pursued, before the respective national/regional patent offices, in order to obtain individual granted foreign patents
The normal deadline for entering the National/Regional Phase is 30 months from the priority date. Individual countries/regions may allow more time and, in practice, the deadline for most countries/regions is either 30 or 31 months from the priority date. In general, you will need to decide in which countries/regions you wish to proceed well before 30 months from the priority date. Note that, if desired, it is possible to enter the National/Regional Phase “early”, before the deadline. However, there is a grace period of 2 months when paying concession fee, the applicant can apply to enter Chinese national phase in 32 months before the expiration date. So, if the PCT application cannot be submitted before the stipulated time limit when entering the Chinese national phase, the submission date can be prolonged for 2 more months. The China Patent Office only accepts application documents in Chinese. The China Patent Office will reduce the examination fee for 20% if the international search report is completed by EPO, JPO or SPO.
Guideline for Patent Application in Hong Kong SAR
Hong Kong patent is divided into standard patent and short-term patent. Standard patent is equivalent to the invention patent in the Mainland while short-term patent is to protect invention and creation of short term commercial value and enable the inventor to obtain the patent right as soon as possible and put it into practice. Short-term patent is different from utility model in the Mainland and it protects both products and processes. Protection scope includes areas such as mechanism, electricity, chemical engineering and physics etc. However it should be noted that one invention by one inventor cannot simultaneously acquire both standard patent and short term patent. There are other regulations protecting designs in Hong Kong.
Hong Kong SAR implements the system of designated national patent registration. During the transitional period, the designated patent offices include China Patent Office, UK Patent Office and EPO (designating UK). The registration procedure for standard patent is divided into two phases:
Phase I: Request to record a designated patent application: Within six months from publication of a patent application in one of the three designated offices of China, UK, or EPO (designating UK), a Request to record (to be prepared by attorney) has to be filed. The following documents and information should be provided by the applicant:
a) Applicant’s details, including applicant’s name, address, telephone and fax numbers. Names and addresses in Chinese of the applicant and inventors, if available, should also be provided. If the inventors are Chinese, Korean, or Japanese, their names, as transliterated in Roman alphabet, should also be given.
b) Details of designated patent application, including title of the invention, filing Date, filing No., publication date and publication No.
c) Details of priority (if any). No need to submit the certified priority document.
d) Two copies of the designated patent application, as published, in loose leaf form.
e) Translation of the abstract into both Chinese and English, if the original application is in a language other than the above two.
f) A statement explaining the applicant’s entitlement to apply and the prescribed documents supporting the statement (if the applicant is not the same person in the application as published). The government filing fee and advertising fee have to be paid upon filing
Phase II: Request for registration and grant: Within six months from the date of grant of the designated patent, or publication in Hong Kong of the Request to Record, whichever is later, the applicant has to apply for registration in Hong Kong by filing a Request for Registration Form (to be prepared by Agent), and provide a verified copy of the published specification of the designated patent.
The term of a standard patent shall be 20 years from filing. A standard patent once registered in Hong Kong is an independent patent, not dependent on the validity of any registrations in China, UK, or EPO.
An application for a short-term patent for product or process can be filed directly in Hong Kong, if the applicant can provide a search report issued from one of the international searching authorities designated by WIPO. The term of a short-term patent shall be 4 years from the Hong Kong filing date, and it is renewable for another four years. The said searching report can be late submitted, provided a deferral of grant of patent is requested by the applicant, within at most 12 months after the Hong Kong filing date.
Documents and information to be provided are more or less the same as for standard patents.
Industrial Designs in Hong Kong are valid for 5 years, plus four renewals (5 years each), making a total of 25 years.
a) Application: An application for protection of design can be filed directly in Hong Kong by submitting a proper application form containing the applicant’s name and address (to be prepared by an attorney), as well as seven sets of clear representations of the design (drawings or photos) plus a statement of novelty. Name and address of the applicant in Chinese, if available, should also be provided.
b) Drawings shall not be larger than 210 X 297 mm in size, and photos, not larger than 160 X 160 mm. Any one side of a view shall not be less than 30 mm in size. The features of the design for which novelty is claimed are the shape and configuration and/or pattern and ornamentation, as appropriate; said design being applied to an article by any industrial process.
c) Multiple Applications: More than one design can be included in one application if the designs relate to the same Locarno class, or the same set of articles.
d) Upon filing, the government filing fee and advertising fee shall be paid.
e) Where a Convention priority is claimed, a certified priority document should be submitted within not more than three months from the Hong Kong Filing Date; and if the certified priority document is in a language other than Chinese and English, a verified translation should be attached to the priority document.
f) Where designer(s) is (are) not same as applicant(s), or where the applicant in the Convention priority document is different from the one now filing in Hong Kong, an assignment, duly notarized, should be submitted within not more than three months from the Hong Kong Filing Date. Registered designs have concurrent copyright protection for 25 years from first marketing of the article.
Guideline for Patent Application in Taiwan
The patent in Taiwan includes three types: invention, utility model and new model. All these three types require substantive examination instead of a registration system. Once the documents for application is completed and meet the basic requirements, the application automatically goes into substantive examination procedure without the applicant’s request. In Taiwan, the term for invention patent is 20 years, utility model is 12 years and new model is 10 years, all counted from the date of filing of the application.
Documents required for application
Nationality certificate: if the applicant is a natural person, he or she shall provide a notarized photocopy of his or her ID card (or passport, census register). A nationality certificate can be used for all applications by the same person for a three year period.
Certificate for juridical person: If the applicant is a juridical person, a notarized hotocopy of his business license is required.
Affidavit: An affidavit executed by the applicant stating that the invention or work is not the result of plagiary; if there are more than one applicant, they may sign on the same affidavit.
Patent description and illustration: A patent and utility model shall be attached with description, claim, illustration and abstract. The form is the same as in China, if it has been applied before in China or other countries, the application No. and documents shall be provided. For the application of new model, the applicant may provide brief description to explain the product and its characteristics. The illustration shall have six side views and stereoscopic view. It is better to have shadow lines to illustrate. Photographs can be used to substitute the illustration. Photographs need to be submitted in quadruplicate.
In the process of application, the immediately necessary documents include claim, description, illustration and affidavit. The nationality certificate or juridical person certificate and POA could be submitted within 60 days from the date of filing of an application.
After filing an application, it is permitted to supplement or amend the description or illustration upon the fees for supplement and amendment has been paid.
Since Taiwan is not a contracting state of Paris Convention, it is advisable to file an application before it has been published in other countries otherwise there may be a risk of being revoked.