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What do you need to prepare before filing patent application in China?
Peter (Baoyu) ZHANG Partner
Business Development Departmen Patent Attorney
Recently, a few friends asked, what do they need to prepare to apply for a patent in China? I think this is a common question, so I have summarized it as follows:
First of all, you need to prepare patent application documents in Chinese. Because the Chinese Patent Office only accepts patent applications in Chinese, you need to translate application documents in foreign languages into Chinese.
In the case of PCT entering China, the translation of the description and claims shall be consistent with the content of those in the international publication transmitted by the International Bureau of WIPO.
The translation should be complete and faithful to the original. An exact literal translation is recommended becausemerely machine translation is not accurate enough and is harmful to the applicant's own rights.
You are not allowed to add any amendments to the translation of the original application. If you want to make amendments, when PCT entering the national phase, you can do it according to Article 41 of the PCT. Or, during the prosecution after entering the Chinese national phase, you still have many opportunities to amend.
For an application involving an amino acid or nucleotide sequence, the specification should include the sequence listing, and the sequence listing should be submitted as a separate part of the specification, and the page numbers of the sequence listing should be consecutive with the specification. It's OK to make the sequence listing an appendix in txt format.
Regarding the timing of the application, you should know that if you apply for patents in China through the PCT route, you need to apply before the expiration of the 30-month period from the priority date. If you fail to apply within the thirty months, after paying the extension fee, you can have your PCT application enter China within 32 months from the priority date. So, your PCT has up to 32 months to enter China from the priority date.
However, if you apply through the Paris Convention route, there will be no time extension.
Next, you need to prepare a power of attorney, aka POA, signed by the applicant. If the applicant is an entity, it needs to be stamped by the entity or signed by the person with signing authority.The scanned copy of the POA is sufficient and the original is not necessary.
You may consider signing a general power of attorney, aka GPOA. After receiving the original GPOA, the Chinese patent office will issue the number of the GPOA. Then, the POA may no longer need to be submitted when filing a patent application, and only the GPOA number needs to be filled in.
Then, if priority is declared when entering China through the Paris Convention route, it is necessary to provide the priority documents that does not require translation, or a code of WIPO Digital Access Service, aka DAS code.
If entering China through PCT route, the priority documents or DAS code will not be necessary.
In addition, and in a nutshell, if the applicant in the priority document is not the same as the applicant entering China, you may also need to prepare a priority transfer certificate.
Finally, you need to provide or determine the following information:
The original name of the applicant and his address. The Chinese translation of the applicant name and address.
The original and Chinese translation of the names of the inventors, the nationality of the first inventor, and if the first inventor is a Chinese nationality, an ID number is also required.
