PCT/Paris Route Entering Into China

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FAQ

PCT/Paris Route Entering Into China

In Chinese patent Law, "invention-creations" mean patents, utility models and designs.

"Patent" means any new technical solution relating to a product, a process or improvement thereof. Once granted, it can last as long as 20 years. That’s why most oversea patents entering into China are filed as “Patent” considering the longer patent term than "Utility Model".

"Utility Model" means any new technical solution relating to the shape, the structure, or their combination, of a product, which is fit for practical use. Once granted, it can last as long as 10 years.

"Design" means any new design of the shape, the pattern or their combination, or the combination of the colors with shape or pattern, of a product, which creates an aesthetic feeling and is fit for industrial application. Once granted, it can last as long as 15 years.

The applicant should enter China by PCT national phase within 30 months from the priority date. If the deadline is missed with any justified reason, the applicant may file a restoration request within 2 months to the Chinese Patent Office with a statement indicating that the delay in entry was unintentional and pay an extra fee.

The reasons to choose China:

The largest economy based on purchasing power parity judged by the IMF

The increasing number of middle-class consumers in China which will reach to 500 million till 2025 according to the McKinsey Research.

Reasonable application and maintenance fees ( One sixth of European Patent Office; less than Japan, Korea and the USA)

Patent Prosecution Highway (PPH) which provides accelerated patent prosecution procedures with the support of the CNIPA

Therefore, China is the most important country for filling patents if you really dream big.

Filing to Grant Procedure for Patent

STEP 1:

FILING

Filing National Application (PCT Route/Paris Convention Route);

STEP 2:

PRELIMINARY EXAMIANTION

Preliminary Examination by the Office;

STEP 3:

PUBLICATION

Publication of the Patent (No Less Than 2 Months After the Date of PCT National Entry, Else if it’s Paris Route, within 18 Months After Application);

STEP 4:

SUBSTANTIVE EXAMIANTION

Request for Substantive Examination (Within 36 Months from the Priority Date);

STEP 5:

GRANT

Issuance of Patent Certificate (Taking Around 2 to 3 Years After Application).

Documents

Required

Power of Attorney (PoA).

PCT Application Number if it’s PCT National Phase, Else Original Patent Application Information is Required.

Frequently Asked Questions:

You’d better enter China by PCT national phase within 30 months from the priority date. If the deadline is missed with any justified reason, you may file a restoration request within 2 months to the Chinese Patent Office with a statement indicating that the delay in entry was unintentional and pay an extra fee.

Chinese version of abstract, claims, specification, drawings (when explanatory text is included).

Within 36 months from the priority date.

It is not hard to get it granted in China and it will take around 2 to 3 years after application. Moreover, you can request for PPH to accelerate the examination, by which it only takes around 1 year from filing to grant.

Annual Fees (CNY)	1st - 3rd years	900
	4th - 6th years	1,200
	7th - 9th years	2,000
	10th - 12th years	4,000
	13th - 15th years	6,000
	16th - 20th years	8,000

The annual fees only need to be paid since the year of grant, and then the ongoing years. For example, an applicant submitted his PCT application on Sep 27th, 2019, entered China by PCT national phase on Jan 26th, 2021 and finally got it granted on Jan 12th, 2024. What he should pay after receiving the grant notice is the 5th annuity of his Chinese patent.

Here’s the explanation:

This Chinese patent’s protection term starts from the PCT application date, which is Sep 27th, 2019.

Sep 27th, 2019 to Sep 26th, 2020 is the 1st year of the annual fee;

Sep 27th, 2020 to Sep 26th, 2021 is the 2nd year;

Sep 27th, 2021 to Sep 26th, 2022 is the 3rd year;

Sep 27th, 2022 to Sep 26th, 2023 is the 4th year;

Sep 27th, 2023 to Sep 26th, 2024 is the 5th year;

Since Chinese Patent Office issued the grant notice within the period of the 5th year, the applicant only needs to pay the annuity of the current year, namely the 5th year. The previous 4 years’ annuities are not required to be paid. Then after the grant year, this applicant should continue to pay the annuity of the 6th year from Sep 27th, 2024 to Sep 26th, 2025 and so on if he wishes to maintain his patent right.

How to Get Protection in HK (Hong Kong)

Patent protection for HK can only be obtained on the basis of an international application in which China has been designated and this application has validly entered the national phase before the China National Intellectual Property Administration (CNIPA).

There are two kinds of patent in the HK, Standard Patent and Short-term Patent. The Standard Patent which is similar with the “Patent” in China or the “Utility Patent” in the U.S. can last as long as 20 years, while the Short-term Patent which is similar with the “Utility Model” in China, Japan and Germany, but it can only last for 8 years from the application date, not 10 years.

To register the standard patent in the HK, there are two steps of action to be taken after the application of Chinese “Patent”: “Request to Record” and “Request to Register”.

An application for a standard patent (“Request to Record”) may be filed at any time within six months from the national publication date of Chinese “Patent”. In practice, we normally ask our clients if they intend to request to record a standard patent in HK when we inform them that it’s time to request to Substantive Examination for his/her Chinese “Patent” of PCT National Entry.

When a “Request to Record” has been recorded in the registry and published without being refused or deemed withdrawn or abandoned and a patent has been granted by the China National Intellectual Property Administration (CNIPA), the applicant shall request the registration and grant of a standard patent. The applicant has to file within six months after the date of grant by the China National Intellectual Property Administration (CNIPA) or the publication of the “Request to Record”, whichever is later.

In brief, you don’t need to decide whether or not to get patent protection in HK until your Chinese patent has been applied and then nationally published. You can leave this matter behind because we will notify you in time.

Brief Introduction of PPH in China

Patent Prosecution Highway(PPH) is a mechanism to facilitate expedited examination of applicants. China has established PPH cooperation with most major economies. And the PPH request is only applicable to patent application in China.

PPH has two main advantages. For one thing, the PPH application will greatly shorten the pending period for the patent to be substantially examined by the examinor. Normally, the first office action(if any) will be issued within 2 months after the PPH request has been accepted, comparing with 12 to 18 months of pending period for the general application after requesting for substantive examination. For another, the authorization rate is higher than the general application.

If the PCT application has received a positive written opinion or an international preliminary examination report of patentability at the international phase, the applicant can file a PCT-PPH application to the Patent Office at the same time when we request for the substantive examination at the national phase. Else if you’ve chosen Paris Convention Route to entering into the national phase, General-PPH may be requested if you can provide the Office Actions, Responses to those Office Actions and Grant Notice(if any) of the Priority Patent.

In brief, you don’t need to decide whether to apply PPH in China or not until you request for the substantive examination. You can leave this matter behind because we will notify you in time.

Estimated Cost for Filing a Patent

Description

Price (USD)

Attorney Fee

700

Govt Fee*

145

Translation Fee**

450

Total

1,295

Get Started

*

Govt fee will be charged later since we need to check the claims and specification of your PCT Application/Original Patent Application in case there’s any additional govt fee according to the Patent Office rules.

**

The translation fee is estimated based on 3,000 English words. It will be charged later since we need to check the number of words in the abstract, specification, and claims.