Patents protect inventions - both products and processes. Designs – also called design patents in China - protect the visual appearance of a product. These IP rights give you the power to exclude others from manufacturing, using and/or selling your invention or design.
Patents and designs are territorial rights, meaning an Australian patent or design only provides protection in Australia. These rights have to be registered in China in order to be protected in China. Patent or design protection in mainland China does not provide protection in Hong Kong or Macau. For more about protection in these territories, see Patents and designs in Hong Kong and Macau.
A patent or design application will only be valid if it is novel (new) as of the filing date of the application. In order to obtain a valid patent or design, the application must be made before you disclose your creation to the public anywhere in the world. If you disclose your invention or design before filing an application, including through a published overseas application (where the application is outside a priority claim), the contents of your application will no longer be novel, and you will generally be unable to obtain a patent or design.
If you file a patent or design application in Australia or another territory, you are given a limited time period to file an equivalent application in other parts of the world and claim the priority date of your earlier application. This is why an IP strategy needs to consider protection in overseas markets from the outset.
China provides three types of patents: invention patents, utility model patents, and design patents. Australian applicants are generally familiar with invention patents, which are equivalent to an Australian standard patent. You may also consider whether a utility model patent or a design patent could be a useful part of your Chinese IP portfolio. Unlike an invention patent, these rights are granted after undergoing preliminary examination but not substantive examination, making them relatively cheap and fast to obtain, and they can be enforced as soon as they are granted. See below for more information on these three types of patents.
In addition to enforcing against infringers, publication of your patent application can be a useful public disclosure to prevent others from obtaining patents to your products. This can be easier than other ways to show your product existed before a later application.
As of 31 March 2019, China reported a total stock of over 2.43 million granted invention patents, 4.57 million granted utility model patents, and 1.63 million granted design patents. Checking whether you have freedom to operate is an important step to take before doing business in China.
A Chinese invention patent is equivalent to an Australian standard patent. The term of protection is 20 years. Invention patent applications can be filed directly with the China National Intellectual Property Administration (CNIPA) but are most commonly filed through the Patent Cooperation Treaty (PCT), the international system that makes it easier to file patents in multiple territories around the world. Hong Kong and Macau are not PCT members - see below for more about how to protect patents in these territories.
Utility model patents
China also provides a utility model patent system, with a maximum term of protection of 10 years. Utility models can be used to protect physical products, but not processes or chemical compounds. The inventive threshold is only slightly lower than an invention patent. Utility models are granted following preliminary examination, which will usually take between several months and one year. Utility models do not undergo substantive examination. A utility model is enforceable immediately after grant, and unofficial data indicate that utility models are the basis of over half the patent infringement cases heard by Chinese courts.
The patentee may request a patent evaluation report from CNIPA at any time with respect to their utility model patent. CNIPA will conduct a search and determine whether the utility model patent meets the requirements of the Patent Law. In a civil action, the court will usually require the patentee to submit a patentability evaluation report.
A Chinese design patent protects the visual appearance of a product and is equivalent to an Australian registered design. In order to be valid, the design must be new, and substantially different from prior designs or combinations of prior designs. A design patent could be used to protect the appearance of a bottle, medical device, vehicle, or consumer product, for example.
Design patents are granted after passing preliminary examination, which will usually take three to six months. The design is then published. A design patent is enforceable immediately after grant.
The patentee may request a patent evaluation report from CNIPA at any time with respect to their design patent. CNIPA will conduct a search and determine whether the design patent meets the requirements of the Patent Law. If the patentee brings a civil action for infringement, the court will usually require the patentee to submit a patentability evaluation report issued by CNIPA.
A Chinese design patent application can claim a priority date based on an Australian application if filed within six months of the filing date of the Australian application.
Oppositions and invalidations
Unlike Australia, China does not provide a system to oppose the grant of an accepted patent. However, after grant of an invention patent, utility model patent or design patent, any person may request the CNIPA patent re-examination department to invalidate the granted patent on the basis it does not meet the requirements of the Chinese Patent Law. Decisions of the patent re-examination department are appealable to the Beijing IP Court within three months of the decision. Patent-related decisions of the Beijing IP Court are appealable to the IP tribunal of the Supreme People’s Court.
A grace period is a limited period in which disclosing an invention or design will not destroy its novelty if you file a patent or design application soon after. China provides a 6-month grace period for patents and designs disclosed under limited circumstances, namely 1) disclosed at international exhibitions sponsored or recognised by the Chinese government, 2) disclosed at certain academic conferences, or 3) disclosed by another person without the consent of the applicant.
Patent or design protection in mainland China does not provide protection in Hong Kong or Macau. For more about protection in these territories, see Patents and Designs in Hong Kong and Macau.
For more on enforcement in mainland China, see Enforcing IP in China.
IP Australia’s Engaging an attorney toolkit sets out everything you need to know about engaging an attorney for your patent application.