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Application for a Patent in China - Part 2 of 2
By Dan Hua - China Business Expert
- If there is no cause for rejection of the application for a patent for invention is found after examination as to substance, the Intellectual Property Office will make a decision to grant the patent right for invention, issue the certificate of patent for invention, and register and publish
it. The patent right for invention comes into effect on the date of the publication.
- Approval of patent for utility model and design -- if no cause for rejection of the application for a patent for utility model or design is found after preliminary examination, the Intellectual Property Office will make a decision to grant the patent right for utility model or the patent right for design, issue the relevant patent certificate, and register and publish it. The patent right for utility model or design comes into effect on the date of the publication.
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Assignment and Transfer of Patent Application Right and Patent
Patents and the right to apply for a patent are assignable. Any assignment of patents or patent application right by a Chinese entity or individual to a foreigner is subject to the joint approval of the State Council’s foreign trade and economic cooperation department and science and technology administration department. If a patent is transferred for other reasons, the party concerned should complete the procedures for the change of patentee with the State Council’s patent administration department by presenting the relevant supporting documents or legal documentation.
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Exploitation of Patent
The patentee may make the patented product or use the patented process, or he may authorise another person to make the patented product or use the patented process. The licensing of patent rights to other parties can take the form of voluntary licensing or compulsory licensing.
(a) Voluntary License for Exploitation of Patent
On the basis of voluntary negotiation, a patentee (licensor) may sign a licensing contract with another party (licensee) for the conditional exploitation of the patent by the licensee for a fee within a prescribed scope, duration and geographic location.
The licensing contract signed by both parties should be in written form and filed with the Intellectual Property Office within three months from the date of signing.
(b) Compulsory Licence for Exploitation of Patent
The Intellectual Property Office may grant a compulsory licence to exploit a patent under the following three circumstances:
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Where an entity which is qualified to exploit the invention or utility model has made requests for authorisation from the patentee of an invention or utility model to exploit his patent on reasonable terms and such efforts have not been successful within three years after the grant of the patent right, the Intellectual Property Office may, upon the application of that entity, grant a compulsory licence to exploit the patent for invention or utility model.
- Where a national emergency or an extraordinary state of affairs occurs, or where the public interest so requires, the Intellectual Property Office may grant a compulsory licence to exploit the patent for invention or utility model.
- Where the invention or utility model for which the patent right is granted is technically more advanced than another invention or utility model for which a patent right has been granted earlier and the exploitation of the later invention or utility model depends on the exploitation of the earlier invention or utility model, the Intellectual Property Office may, upon the request of the later patentee, grant a compulsory licence to exploit the earlier invention or utility model. By the same token, the Intellectual Property Office may, upon the request of the earlier patentee, also grant a compulsory licence to exploit the later invention or utility model.
- The entity or individual that is granted a compulsory licence for exploitation does not have an exclusive right to exploit and does not have the right to authorise exploitation by any other parties.
Guide to Doing Business in China (2004/05)
HKTDC Research Department 8-13
- The entity or individual that is granted a compulsory licence for exploitation should pay to the patentee a reasonable exploitation fee, the amount of which will be fixed by both parties in consultation. If the parties fail to reach an agreement, the Intellectual Property Office will adjudicate.
- If the patentee is not satisfied with the decision of the Intellectual Property Office granting a compulsory licence for exploitation, or if the patentee or the entity or individual that is granted the compulsory licence is not satisfied with the adjudication made by the Intellectual Property Office regarding the exploitation fee payable for exploitation, he may, within three months from the receipt of the notification, institute legal proceedings in the people’s court.
-Duration of Patent Right
The duration of patent right for inventions is 20 years, and the duration of patent right for utility models and designs is 10 years, counted from the date of filing of the patent application.
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