Hong Kong: Several Issues Concerning The Procedure For PCT Applications To Enter The National Phase In China

It has been over six years since China began to implement the Patent Cooperation Treaty (PCT) on 1 January 1994 when it went into force in China. PCT is doubtlessly efficient and more economical to applicants desirous to obtain patent protection for the same inventions in several countries. In recent years, more and more applicants, especially some large foreign companies, are seeking patent protection for their invention-creations in different countries and regions by following the PCT procedure. To date, about 60% of the foreign patent applications in China are international PCT applications designating China.

The entire procedure of the international phase under PCT as an international treaty must be complied with by all the Contracting States thereof. By contrast, as for provisions relating to national phase, PCT offers therein the legal bases for the application of national laws of the various countries according to the international principle of territoriality and independence of patents. As regards applications entering the national phase in China, what applicants should know and comply with are mainly the application of the national laws of China. This article will be presenting and interpreting some of the issues concerning the application of the national laws in the procedure for PCT applications to enter the national phase in China for the reference of those interested in the profession.

It needs to be noted that, compared with directly filing applications with the Chinese Patent Office for patent for utility model, filing PCT applications to seek protection for utility model in China is not an economical and desirable approach, and, as a result, it is rarely adopted in practice. Therefore, this article only touches upon the issues relating to applications for patent for inventions designating China.

In China, the PCT Division of the Patent Office under the State Intellectual Property Office (SIPO) is responsible for receiving requests filed by applicants in their PCT applications for entry into the national phase and for formal examination of these applications. For the purpose of this article, both ¡°the Patent Office¡± or ¡°the Chinese Patent Office¡± refer hereinafter to the Patent Office under SIPO.

If an applicant designates China in his PCT application, he may file a request (PCT/CN/501Form) with the designated office---the PCT Division of the Chinese Patent Office to enter the national phase no later than at the expiration of 20 months from the priority date (or the date of international application if there is no priority date in the request, the same below) according to the provision of Article 22 under Chapter I of PCT. Where the applicant requests the international preliminary examination authority for international preliminary examination before the expiration of 19 months from the priority date, without excluding China as the selected country to use the result of the international preliminary examination, he should file his request (PCT/CN/501 Form) with the selected office--- the PCT Division of the Chinese Patent Office ---- for entry into the national phase no later than at the expiration of 30 months from the priority date according to the provision of Article 39 under Chapter II of PCT.

It is worth an applicant's attention that, similar to the practice of allowing applicants a grace period by EPO and the patent offices of some other countries, the Chinese Patent Office allows applicants to fulfil the formalities to enter the national phase in China by payment of the restoration fee within the two months from the expiration of 20 months under said Chapter I or 30 months under Chapter II.^* In other words, beyond the time limit for entering national phase under Chapter I and Chapter II of PCT, applicants may be respectively allowed to have a grace period of 2 months before the Chinese Patent Office. That is, the final time limit for entering the national phase under Chapter I is 22 months and that under Chapter II is 32 months from the priority date.

In the PCT Applicants Guide, it is repeatedly recommended that applicants designate a local patent agency for their purpose once they are through with the procedure for entry into a designated or selected office. In China, this designation is a must under Article 19 of the Chinese Patent Law. Foreigners, foreign businesses and other foreign organisations, without their habitual residence or business office in China, must appoint a foreign-related patent agency so authorised to act as their agent in order to complete the procedure for PCT applications in the national phase to acquire patent protection. According to Rules 19 and 20 of the Provisions Concerning the Implementation of the Patent Cooperation Treaty in China (the Provisions for short), for an international application designating China which is filed and disclosed in a language other than Chinese, the applicant should furnish a Chinese translation of the international application when entering the national phase, otherwise the effect of the international application in China should cease. For that matter, foreign applicants should furnish the pamphlet of international publication or its English translation to their appointed agency as early as possible, so that the latter could have time enough to translate the international application. In case where the time limit prescribed in Chapters I and II of PCT would expire soon, the applicants are advised to allow their agent to finish the translation and file the applications within the two months of grace period. Doing thing this way would, on the one hand, be good to ensure the quality of translation and avoid making mistakes in hasty translation, and, on the other, prevent the increase in the fee for urgent translation.

In entrusting a Chinese patent agency to take care of the procedure for entry of a PCT application into the national phase, the entrusting party should at least furnish to or instruct the patent agency to get a copy of the pamphlet of the international publication in order to translated it into Chinese. Moreover, he or it should also present a power of attorney signed thereby to the entrusted agency. If the power of attorney is not ready at the time to enter the national phase, it may be presented after filing. It should be noted, however, that, if the power of attorney presented by the applicant is dated, the effective date should be earlier than or the same as the date of entry into the national phase in China. It is common that the Patent Office, finding the effective power of attorney missing, may notify the agent, requesting for submission of the applicant's power of attorney within 2 months from the date of notification.

In short, where foreign applicants proceed with the procedure for entry into the national phase in China using their PCT applications in a language other than Chinese, they must appoint a foreign-related agency authorised by the state as their agent, and file with the Patent Office their request (PCT/CN/501 Form) for entry into the national phase, together with the Chinese translation of the international publication pamphlets, and pay such required fees as the application fee, priority claim fee (if any) and additional claim fee within 20 (under Chapter I) or 30 (under Chapter II) months or, within at most 22 or 32 months of the grace period.

Sometimes, an applicant does not want to have the 20 (under Chapter I) or 30 (under Chapter II) months' time, but request for extension of his patent application to the national phase as early as possible out of business consideration or necessity of regional strategy. It is a case of early entry into the national phase where the applicant requests for such entry before the completion of the international publication.^**

For the purpose of going through the formalities for early entry into the national phase in China, applicants must furnish, in addition to the Chinese translation of their international applications, a signed Request for Early Entry into the National Phase in China, stating that they agree that the Chinese Patent Office discloses their application in Chinese before the disclosure of the original texts of the international application, and, meanwhile, submit a copy of international application document from the receiving office, and pay the required fees.

It is worth pointing out that after an applicant initiates the procedure for entry into the national phase and the initiation is accepted by the Chinese Patent Office, any act to withdraw the application from the Chinese Patent Office, even if the withdrawal takes place before the expiration of the time limit for PCT application to enter the national level, will result in the termination of validity of the application and in disallowance to reentry.

As regards any amendments an applicant makes of his application documents according to PCT provisions, only when the applicant hopes to incorporate these amendments into the national phase in China as a basis for substantive examination is it necessary to translate and submit them to the Patent Office and, meantime, expressly indicate in the request (i.e. PCT/CN/501 Form) of the application which amendments serve as the basis for the examination. The Patent Office will not consider any amendments of the application which are made in the international phase without being translated into Chinese.

At the time of submitting the Chinese translation of the text of the international publication for entry into national phase, an applicant may amend the claims, description and drawings within the scope of the publication of the original international application according to Article 28 of PCT (in entry under Chapter I) or Article 41 (in entry under Chapter II). Further, according to the provisions of Article 33 of the Chinese Patent Law and Rule 51 of its Implementing Regulations, the applicant, when requesting for substantive examination or responding to the office action of the first examination conducted by the Patent Office, may actively amend the application document within the scope of the original application. If an applicant requests for substantive examination at the time of entry into the national phase, he may make the amendments within 3 months from the date of receipt of the Notification on Publication of Application for Patent for Invention and Entry into the Procedure for Substantive Examination issued by the Patent Office.

It must be noted that the process of the examination is delayed by another search or examination on the part of the examiner made necessary by the amendments the applicant made when responding to the office action of the first examination. Consequently, the Patent Office now tends to accept the amendments the applicant proposed of his own accord to replace the document previously submitted after he files his request for substantive examination and before he receives the first office action and bases its examination thereon. Now the Patent Law is being amended for the second time, with revision being made of Article 33 thereof and Rule 51 of its Implementing Regulations.

Unfortunately, the answer to this question is negative. According to the Provisions, only if an applicant should submit the Chinese translation that is the same as the pamphlet of PCT international publication, has he completely met the formalities as required for entering the national phase in China. And the Patent Office actually charges the additional claim fee on the basis of the calculated number of claims originally filed. Any post-filing amendments of claims and addition or reduction of claims are no long calculated. That is, no additional fee is charged for the claims added, nor money refunded for the claims dropped. As for PCT applications, the additional claim fee is charged according to the number of claims made in the pamphlet of the international publication.

Since submission of the Chinese translation of the pamphlet of the international publication is required, an applicant cannot avoid the translation fee and the cost of other official fees even if he amends the claims by reducing their number when entering the national phase.

Incorrect translations, lexical mistakes and omissions like type errors, and wrong submission of amended text as the published international text, etc. are unavoidable in the course of translation. Thus, the Chinese Patent Office allows applicants to present the Request for Correction of Translation Mistakes as a means to make correction. The correction should be made before the Patent Office completes the preparatory work to publish the Chinese translation. In general, filing the above Request within the 4 months from the date of entry into the national phase in China is early enough for the normal publication and, so, acceptable. To be sure, the correction should be made within 2 months from the date of submission in China.

According to Article 30 of the Patent Law and Chapters 3.2.1.3 and 3.2.1.4, Part I of the Examination Guidelines, if an applicant requests, under the Paris Convention, that the prior application serve as the basis of the priority right of a national application, he should furnish a certified copy of priority document within 3 months from the filing date. When the applicant indicated in the certified copy of priority document is different from the applicant of the application filed in China, the applicant should also submit the original assignment of the prior application or a copy notarized by a notary authority or a copy certified by the patent office receiving the prior application within 3 months from the filing date.

As for PCT applications, since applicants furnished the certified copy of priority document in the international phase according to PCT, they are no longer obliged to present again the same document to the designated or selected office. Usually, the Chinese Patent Office does not check the certified copy of priority document of PCT applications any more, with the exception to these circumstances where the Patent Office notes that the existence of ¡°P.X¡± or ¡°P.Y¡± reference documents is shown in the received international search reports, namely where the international search authority searches any document of ¡°P.X¡± category affecting the novelty or that of ¡°P.Y¡± category affecting the inventiveness, which are disclosed before the international filing date, but after the priority date of the international application. Then the Chinese Patent Office would request the International Bureau to communicate a copy of the document proving the priority right to be used by examiners in their examination in the Office. And only under these circumstances does the Patent Office compare the applicant of the international application with the prior applicant in the certified copy of priority document. When they are found to be different applicants, the Patent Office may notify the applicant to furnish the assignment of the priority right. The notification usually allows the applicant to prepare said document in two months' time.

Thus, only when an international application claims priority right in the United States, the applicant is a non-natural person and the international search report has cited a ¡°P.X¡± or ¡°P.X¡± reference document, is it possible for him to be required to furnish the Assignment of Priority Right of the prior application. In general, it is quite unnecessary for applicants to take so much trouble for their respective application. They may as well wait until the Patent Office makes request in this regard during the formal examination.

Formally, it is required that an assignment of priority right bear the signature by (all) applicant(s) of the prior applicant and be the original. If it is not, a copy is also acceptable that is notarized by a local notary authority or certified by a local patent office (e.g. USPTO). It should also be noted that the effective date of the assignment document must be prior to or, at the latest, on the same day as the international filing date of the international application.

There are two circumstances with regard to the issue of different applicants in the national phase in China and in the pamphlet of the international publication depending on what have caused the difference:

One is that change of the name of the applicant results in the difference of the present applicant from the one indicated in pamphlet of the international publication, but they are actually the same person with no assignment of the application right taking place.

In this case, if the applicant has registered the change with the International Bureau and had it recorded (in PCT/IB/306 Form), then it is not necessary to furnish any further certified document to the Chinese Patent Office. Otherwise, if the change is not put on file with the International Bureau, the applicant needs to produce the original business registration relating thereto to prove that the application right still belongs to him or it. Unable to do so, he may furnish a notarized copy thereof. The Patent Office sometimes may require that the notarized copy be certified by the Chinese Embassy or Consulate in that country. As is shown, such formalities are relatively complex. Therefore, if time permits, the applicant is advised to do all he can to state the change in name at the International Bureau in order to avoid future trouble of furnishing certified documents to the designated or selected office.

In case that certified change in name is required, an applicant, with several international applications going into the national phase, may request, through his agent, the Chinese Patent Office to make a numbered registration of his furnished documents certifying the change. He then may use the certified copy showing the change so registered with the Patent Office to support the same applicant in future procedures for entering similar application into the national phase.

The second circumstance is that the assignment has taken place and the applicant (assignor) in the pamphlet of the international application is not the applicant ( assignee) in the national phase in China.

In this case, whether or not the change has been registered with the International Bureau, the applicant needs to furnish the original document signed by both assignor and assignee concerning the assignment of the right of international application. Unable to do so, the applicant should furnish a copy thereof notarized by the local notary authority. Although some in the Patent Office are for the opinion that such notarized copy should be certified by the Chinese Embassy or Consulate there, in practice, the Patent Office has accepted the notarized copies without certification.

Here the agent should note that when changes effected by assignment have been registered with the International Bureau, i.e. recorded in the PCT/IB/306 Form, it is all right to directly file the request (PCT/CN/501 Form) for entry into the national phase in the name of the new applicant (the assignee), and, to furnish, at the same time or afterwards, the above-mentioned assignment document. If the assignment is not registered with the International Bureau, the applicant of the request (PCT/CN/501 Form) for entry into the national phase should be the original applicant (the assignor), and submit, at the same time or afterwards, the above assignment document in the form of request for bibliographic change to support the change by the applicant.

While examiners generally refer to and, sometimes, rely on the result of international search report in their substantive examination of patent applications entering China through PCT, and while international preliminary reports are not binding on a selected office, most examiners tend to accept the result of international preliminary examination. As regards the issue of unity, however, the Chinese Patent Office makes its judgement entirely according to the national standards under the Chinese Patent Law, and these judgements are made by responsible substantive examiners after applications enter the substantive examination procedure. During the procedure of formal examination when PCT applications enter the national phase, the Patent Office does not evaluate the unity thereof. Whether or not an international search report discards a part of an application deemed without unity, the Chinese Patent Office accepts all the contents of the international application in the pamphlet of the international publication. Accordingly, applicants do not need to adopt separate applications or any other means to address the unity issue pointed out in the international search report when entering the national phase, but, rather, put it aside until the substantive examination in which examiners independently work out their decision according to the national law. If examiners then still hold the patent problematic in terms of unity and notify the applicant, it would not be too late to pay the search fee and proceed with filing separate applications. The applicant does not have to worry that emergence of the unity issue in the international phase would lead to incomplete search, thus resulting in the loss of his right in the national phase in China.

It is expected that the second amendment of the Patent Law and its Implementing Regulations to be adopted soon will incorporate the provisions concerning PCT national phase in various regulations or notifications.

(This article is originally published in N0.4/2000 issue of China Patents & Trademarks -- a Quarterly journal published by China Patent Agent (H.K.) Ltd.)

* See Rule 35 (1) of the Provisions on the Implementation of Patent Cooperation Treaty in China.

** See Articles 23 (2) and 40 (2) of the Patent Cooperation Treaty.