Patents in China: An update 

The Chinese Patent Office (CNIPA) has published new regulations implementing its Patent Law and new examination guidelines. Marion Bénetière outlines the main changes and their implications for companies planning to file patents in China.

After more than two years of drafts and revisions, the Chinese Patent Office (CNIPA) published the final version of Implementing Regulations of the Patent Law, as well as new guidelines for examiners in December last year. Both texts entered into force on 20 January 2024. Here's what you need to know about the amendments: 

Patents in China: CNIPA’s new general procedure 

• Removal of the 15-day rule 

Allowance of a 15-day sending deadline is no longer applicable to communications issued in electronic form by the CNIPA. 

Here, the CNIPA is following in the footsteps of the EPO which renounced its 10-day rule on 1 November 2023.  

It puts an end to the ‘fiction’ that a document is deemed to have reached its recipient on a specific day after it has been delivered to the postal service provider or transmitted by electronic means of communication. These revised provisions reflect the principle of instant meaning in the digital world. 

• Priority right for patents in China 

A restoration of the priority right may be requested for a Chinese patent application within 14 months from the priority date or for the Chinese national phase of a PCT application, if the priority right has not been restored during the international phase, within two months from the date of entry into the national territory. 

Provided that priority has been claimed when filing the Chinese patent application, the applicant may file a request to add or correct a priority claim within four months from the filing date or within 16 months of the earliest priority date. 

• Incorporation by reference 

Within two months from the filing date of the Chinese patent application, the applicant for a Chinese patent application may request incorporation by reference of all or part of the description or claims registered in an earlier patent application of which priority is claimed. 

• Grace period 

A grace period, without loss of novelty, is granted in the event of disclosure within six months before the filing date of a Chinese patent application, if this disclosure took place in a technical conference organised by an international organisation recognised by the competent authorities of the State Council of China. 

It is possible, but this point remains to be confirmed, that conferences organized by standardization organizations, such as ETSI (European Telecommunications Standards Institute) or ITU-T (International Telecommunication Union Telecommunication Standardization Sector), can enter into the scope of this provision. 

• Patent Term Adjustment (PTA) 

Applicants for patents in China now have the right to request an adjustment of the term of their patent, within three months of the grant of the patent, if the patent was granted more than four years after the patent filing date and more than three years after the request for substantive examination, whichever is later. 

To calculate this adjustment, reasonable delays due to a review procedure or an administrative dispute, for example, are viewed positively, whereas unreasonable delays, such as a request for extension of a response time by the applicant or early entry into the Chinese national phase without having requested early processing of the patent application, are viewed negatively. 

• Change of inventor 

It is now possible to add or delete inventors named in the patent application. An application must be submitted to CNIPA within one month of receipt of official acknowledgment of receipt of the deposit. 

• Rule for filing drawings

Figures made in colour are now accepted. 

New from CNIPA: computer-implemented inventions 

• Computer program product claim 

A computer program product claim becomes eligible under the new examination guidelines. 

The term ‘computer program product’ means a software product that implements a solution primarily by means of a computer that executes the instructions of the software or program. 

Such a claim covers software distributed online since tangible media is no longer required. 

As a result of this change to the examination guidelines, eligible objects now include ‘a process’, ‘a computer device/apparatus/system’, ‘a computer-readable storage medium’ and ‘a computer program product’. 

• Diagnostic claim 

Diagnostic methods remain non-patentable subject matter in China if their immediate objective is to obtain the diagnostic result of a disease or health condition. However, information processing processes in which all stages are executed by computer are no longer considered diagnostic methods excluded from the field of patentability. 

This change is enabled by the new guidelines which provide an expanded list of examples of methods that are not diagnostic methods, now including "information processing methods all steps of which are carried out by devices such as computers”. 

This change aims to promote innovation and patent protection in the field of intelligent medicine, through computer-executed information processing processes. 

New from CNIPA: Pharmaceutical patents 

• Patent Term Extension (PTE) 

Patent Term Extension (PTE) is now available for product patents, preparation process patents and patents for use for medical purposes of the active pharmaceutical ingredient contained in a ‘new medicine’. 

The PTE is calculated by subtracting five years from the time elapsed between the date of filing of the Chinese patent application and the date of authorisation to place the drug on the Chinese market. 

The maximum duration of compensation is five years and the total effective duration of validity of the patent after authorization to place the medicine on the market must not exceed 14 years. 

Patents in China, CNIPA and the principle of good faith 

The principle of good faith must be considered and respected at all stages of the procedure, including during the preliminary examination, the substantive examination if the examiner has sufficient evidence or reasons, and during review or invalidation procedures at the request of the applicant. Violation of the principle of good faith is grounds for rejection and invalidation. 

Thus, China is evolving its practice regarding invention patents to integrate current technological advances and anticipate future developments. It also makes the territory more attractive for foreign applicants with flexible procedures more in line with those in force in other major jurisdictions, such as Europe and the United States. 

If you are interested in filing patents in China and would like to take these changes into account in your IP strategies, please speak to your Novagraaf attorney or contact us below.  

Marion Bénetière is a French and European Patent Attorney based at Novagraaf in Paris.