China Patents - Getting it right in the beginning

30 Oct 2018

I was privileged recently to host a panel during the ABA IP West conference in Newport Beach. The panel included three experts in Chinese patent practice. The purpose of this post, and possibly others, is to share some insights into Chinese patent prosecution and enforcement. In this post, I provide some tips on initial steps should be taken to ensure that you make the best of what is fast becoming the world's best destination for patent applications.

 

Translations

 

A significant proportion of Chinese patent applications find their origin in earlier patent applications prepared in English. It follows that these Chinese patent applications are supported by translations. Errors in translation might not be capable of being corrected. This is partially a result of China's strict "new matter" laws. There are also no formal provisions for for correcting a Chinese patent application after issuance. Given that an error might not become apparent until licensing law enforcement, the need to ensure that the translation is accurate is important. Therefore, the selection of a suitable Chinese agent is critical. The agent should be responsible for both the translation and national phase entry. That way, the agent will have the opportunity to ensure that any ambiguities or other issues with the translation can be attended to before national phase entry.

 

One practical way of addressing this is to consider that the specification you're preparing may very well require translation into Chinese at some point in time. You should choose to use short sentences. Also use simple words as opposed to highly technical terms, if possible. This is good drafting practice anyway given that a contested patent is often read by non-technical people.

Draft with a view to amendments

 

A European patent attorney once remarked to the author that drafting should be an exercise in front-loading. This is also the case in China. Article 33 of the China Patent Laws, which restricts the nature of amendments to patent application documents can be strictly interpreted. This may mean that an amendment to narrow down a broad generic term to address prior art may be limited to specific example(s) provided in the description. It is therefore a good idea to include levels of generic language as fall-back positions for amendment.

 

For example, an application for amendment by Epson (Chinese Patent 00131800.4) to amend “storage means” to “memory” was refused because the only reference in the specification relating to a storage means was reference to “semiconductor memory”. Such an amendment would have passed muster in the United States, for example. It follows that wording in the specification along the lines of “the storage means may be a memory for storing data, for example, a semiconductor memory” could have avoided this issue.

 

This is contrast with the more practical view of what constitutes a disclosure in the United States. The approach in China is somewhat aligned with the approach in Europe. Thus, even at the drafting stage, a practitioner should be thinking about support for amendments that may need to be made during prosecution or even for pre-enforcement.
 

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Eagar & Associates Pty Ltd is a wholly-owned subsidiary of Eagar & Associates Holdings Pty Ltd. Each entity is a private incorporated company. Each registered attorney of Eagar & Associates Pty Ltd is bound by the Code of Conduct for Trans-Tasman patent and trade mark attorneys 2018