"*~FAQs for Patent~*"

Mainland China Filing/Amendment Practices

  There is no grace period from the filing date to submit the Chinese translation for the PRC convention application. That is, it is necessary for us to file within one year from the claimed priority date and submit the Chinese text upon filing for a new local convention patent application in order to enjoy the priority claim based on the corresponding foreign application.

  Voluntary amendments to the application may be made at the time either when a Request for Substantive Examination is made or within three months, from the date of receiving a Notice on Entering into Substantive Examination by the Chinese Patent Office. In addition, the amendments should not go beyond the scope of the disclosure contained in the initial description and claims. Thereafter, the Applicant should make the amendments on the basis of the examination opinions/requirements of the IPO, which are strictly limited not to add any new Claim not deriving from the original claims, to revise a claim to be not directed to the identical subject matter/claim scope, or to broaden the protection scope of any a Claim. Otherwise, the amendments will be rejected. For a PCT application entering into the national phase in Mainland China. The documents we will need to receive as follows (if desired, we could locate Items 1 ¡V 12 by ourselves if provided with the PCT application number):

  1. PCT Request with General Power of Attorney;
  2. Notification of the International Application Number and of the International Filing Date;
  3. Form PCT/IB/301, Notification of International Application Number and of the International Filing Date (if any);
  4. Form PCT/IB/304, Notification of Receipt of Record Copy (if any);
  5. International Search Report With Written Opinion (if any);
  6. Reply To Written Opinion With Article 34 Amendment Including PCT Demand - Chapter II (if any);
  7. International Preliminary Examination Report;
  8. PCT International Publication;
  9. PCT International Search Report;
  10. EPO Form 1201 (if any);
  11. Clean - Claims (if any);
  12. PCT Application; and
  13. The executed power (which can be supplemented within two months after filing).

  A general power of attorney will be continuously effective for a same Applicant for all PRC applications including the new local patent applications and the national phase for PCT applications. There is a two-month grace period for entering into the national phase in PRC if we could not timely enter into the national phase for the PCT application within 30 months from the earliest priority date. Even though there is a two-month grace period available for the national phase entry of PCT application, it is still necessary to submit the Chinese text upon filing.

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Hong Kong Patent Recordal

  For the Hong Kong Standard Patent Recordal, there are two stages to be recorded based on the corresponding CN or EP/UK publication texts issued within 18 months from the earlier priority filing date and after grant respectively.

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Submission Deadlines

  Voluntary amendments to the application may be made at any time within fifteen months from the filing date of the earliest priority application or upon requesting for the Substantive Examination. Otherwise, it should be made upon responding an Office Action.

  The deadline for requesting the substantive examination for an application is 3 years from the local filing date while that for a Mainland China application from the priority date.

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Software Patents (Explained Through Qs & As)

  Is there protection available for software patents?
  A: Yes.

  If protection is available for software patents, what subject matter is allowable (e.g. post processing result, etc.)? Are there any particular claim-drafting formats that are preferred? If so, are there any available examples of accepted claim language?
  A: As is known, the range relating to software acceptable in the US is quite broad. It is nearly the same in Taiwan except those identified in the following.

  What is the average amount of time necessary to secure a software patent as opposed to an electrical (hardware based) patent?
  A: Generally speaking, both of them are officially set to receive a first office action between 21 and 27 months from the filing date although it is not very exact.

  If software patents are not allowed, are there acceptable work-arounds? For example, in the U.S., the following is an acceptable claim "A computer-readable storage medium storing a set of instructions for execution by a general purpose computer to [do something], the set of instructions comprising:" [recite "code segments", each code segment having a different function].
  A: The forbidden one is "A computer program comprising:" since it is held that a computer program should be protected under the copyright law.

  What is the standard for patentability (e.g. obviousness, problem-solution, advantageous effect)?
  A: The standard for patentability for software patents still includes novelty, non-obviousness and utility.

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