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The Procedure in the National Phase

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The Procedure in the National Phase

CN.01 FORM FOR ENTERING THE NATIONAL PHASE. The Office has available a special form for entering the national phase (see Annex CN.II). This form should preferably (but need not) be used when effecting the payment of the national fee and for the furnishing of the translation of the international application into Chinese.

CN.02 TRANSLATION (CORRECTION). Errors in the translation of the international application can be corrected with reference to the text of the international application as filed (see paragraphs 57 and 58 of the General Part of this Volume).

CN.03 FEES (MANNER OF PAYMENT). The manner of payment of the fees indicated in the Summary and in this Chapter is outlined in Annex CN.I.

CPL Art. 35-39
CN.04 REQUEST FOR EXAMINATION. The Office examines patent applications as to substance only upon a request for examination and the payment of an examination fee which must be effected within three years from the priority date. The amount of the examination fee is indicated in Annex CN.I. A copy of the form for requesting examination is contained in Annex CN.III.

CPR Rule 16
CN.05 POWER OF ATTORNEY. An agent must be appointed by filing a power of attorney. A model is given in Annex CN.IV.

PCT Art. 28
               41
CPR Rule 109
                  51
CN.06 AMENDMENT OF THE APPLICATION; TIME LIMITS. With regard to an international application for a utility model, the applicant may file a request with the Office to amend the description, drawings and claims within one month from the date of entry into the national phase. With regard to an international application for a patent of invention, the applicant may amend the application on his or her own initiative at the time when a request for examination is made, and within three months after the receipt of the notification of the Office that the application has entered into examination as to substence.

CN.07 INSTRUMENT OF ASSIGNMENT. The applicant is presumed to have the right to file the international application and therefore no instrument of assignment is required if the international application is filed by an entity for an employee-invention made by an inventor who is an employee of that entity. After the application is filed, an instrument of assignment is required for each change if there is any change in the person of the applicant.

PCT Art. 17(3)(b) 
               34(3)(c)
CN.08 SPECIAL FEE IN CASE OF LACK OF UNITY OF INVENTION. Where a part of the international application was not subjected to international search or preliminary examination because the international application did not comply with the requirement of unity of invention and the applicant did not pay the additional search or preliminary examination fee to the International Searching or Preliminary Examination Authority, the Office will decide whether the said finding as regards the application translated into the Chinese language was correct. If this is found to be the case, the Office will invite the applicant to pay a special fee within the time limit fixed in the notification of this decision. The amount of the said fee is indicated in Annex CN.I. Where the applicant does not pay the special fee, that part of the international application which was not subjected to international search or preliminary examination will be considered withdrawn.

CPR Rules 94-95
CN.09 MAINTENANCE FEES. The maintenance fees shall be paid as from the beginning of the third year, unless a patent is granted before that date, in which case maintenance fees shall be paid for all consecutive years following the international filing date at the time when the application goes through the formalities of registration of the grant of patent right. The amount of the maintenance fee is indicated in Annex CN.I.

CPL Art. 43
CPR Rules 54
                 95-96
CN.10 ANNUAL FEES. The first annual fee must be paid within two months from the receipt of the notice from the Office of the grant of the patent. All subsequent annual fees must be paid in advance within the month before the anniversary of the international filing date. If the annual fee is not paid or not paid in full, the Office will invite the applicant to pay it within six months from the expiration of the time limit due, with a surcharge. Where the annual fee is not paid within the prescribed time limit, the patent shall be deemed lapsed from the expiration of the time limit within which the annual fee should have been paid. Amounts of the annual fees are indicated in Annex CN.I.

PCT Art. 25
PCT Rule 51
CPR Rule 115
CN.11 REVIEW UNDER ARTICLE 25 OF THE PCT. The applicable procedure is outlined in paragraphs 63 to 66 of the General Part of this Volume. Where an international application is considered withdrawn, the applicant may request reconsideration by the Office.

PCT Art. 24(2)
               48(2)
PCT Rule 82bis
CPR Rule 51
CN.12 EXCUSE OF DELAYS IN MEETING TIME LIMITS. Reference is made to paragraphs 67 to 71 of the General Part of this Volume. If the applicant fails to perform the acts necessary for entry into the national phase within the prescribed time limit of 30 months, the applicant may perform the required acts before the expiration of a time limit of 32 months from the priority date, provided that the applicant pays a surcharge for late entry of the national phase.

CPR Rule 7
CN.13 Where, because of force majeure, after having performed the acts necessary for entering the national phase, the time limit prescribed in the CPL or the CPR or specified by the Office is not observed, resulting in the loss of any right, the applicant may request restoration of the application within two months from the date of the removal of the impediment, or, at the latest, within two years from the expiration of the time limit. Such a request should be accompanied by a statement of reasons for the failure to meet the time limit and any relevant supporting documents. Where, because of any justified reason, the time limit prescribed in the CPL of the CPR or  specified by the Office is not observed, resulting in the loss of any right, the applicant may state the reasons and request the Office to restore his or her rights, within two months from the date of receipt of a notification from the Office.

CPR Rule 39
                40
PCT Rule 49bis.1
                (a), (b)
                76.5
CN.14 UTILITY MODEL. If the applicant wishes to obtain a utility model instead of a patent in China, on the basis of an international application, for international applications filed before 1 January 2004, this must have been indicated in the international application (in Box No. V of the request) when filed; for international applications filed on or after 1 January 2004, since the request form no longer provides for the furnishing of such an indication, the applicant, when performing the acts referred to in Article 22 or 39, shall so indicate to the Office.

CN.15 The requirements for the national phase are basically the same as for patents, except that for utility models a drawing must be furnished and no examination as to substance is carried out. An international application for a patent may not be converted into a utility model application, and vice versa.

CPL Art. 41
CPR Rules 58-63
CN.16 APPEALS. Where an international application is rejected in the national phase, the applicant may, within three months from the date of receipt of the notification, request reexamination by the Patent Reexamination Board and pay a reexamination fee.

(1 January 2004)


CN.17 HOW TO GET PROTECTION IN THE HKSAR. Patent protection for HKSAR can only be obtained on the basis of an international application in which China has been designated in the international application and which has validly entered the national phase before the China Intellectual Property Office. The further procedure before the IPD of the HKSAR is laid down in the Patents Ordinance (No. 52 of 1997).

Ordinance Sec. 16
CN.18.01 STANDARD PATENT. Section 16 of the Ordinance provides for a standard patent based on an international application designating China.

CN.18.02 FORM FOR RECORDING AN APPLICATION FOR A STANDARD PATENT. For recording an application for a standard patent the use of the specified form is required. The form "Request to Record a Designated Patent Application for a Standard Patent" will be provided free of charge by the IPD of the HKSAR.

Ordinance Sec. 16
CN.18.03 DOCUMENTS FOR RECORDING AN APPLICATION FOR A STANDARD PATENT. In addition to the form specified under paragraph CN.18.02, the applicant has to file:
  (i) a photocopy of the international application as published by the International Bureau;
  (ii) a photocopy of the international application published by the China Intellectual Property Office if the international application was not published in Chinese in the international phase;
  (iii) a photocopy of any publication of information by the China Intellectual Property Office concerning the international application.

CN.18.04 SPECIAL REQUIREMENTS OF THE STANDARD PATENT. The applicant has to file:
  (i) in both Chinese and English: the title of the invention, the abstract and the bibliographic data;
  (ii) the name of the inventor if it has not been furnished in the "Request" part of the international application;
  (iii) a statement explaining the entitlement to apply for the grant of a standard patent and the prescribed documents supporting that statement.

CN.18.05 FEES (MANNER OF PAYMENT). The manner of payment of the fees indicated in this chapter is outlined in Annex CN(HK).I.

Ordinance Sec. 15
CN.18.06 TIME LIMITS FOR MEETING THE REQUIREMENTS. An application for a standard patent ("Request to Record") and the documents specified under paragraph CN.18.03 may be filed at any time within six months from the date of the Chinese national publication; or if the international application was published in Chinese in the international phase, they may be filed at any time within six months from the date of the issuance of the National
Application Notification (PCT/CN 503) by the China Intellectual Property Office. The filing and advertisement fees shall be payable within one month after the earliest filing of the "Request to Record."

CN.18.07 ADDRESS FOR SERVICE. The applicant is not required to appoint an agent but he is required to have an address for service in the HKSAR. The address so furnished shall be treated for the purpose of the application as the address of the applicant.

Ordinance Sec. 23
CN.18.08 REQUEST FOR REGISTRATION AND GRANT. Where a "Request to Record" has been recorded in the register and has been published and the "Request to Record" is not refused or deemed withdrawn or abandoned and a patent has been granted by the China Intellectual Property Office, the applicant shall request the registration and grant of a standard patent.

Ordinance Sec. 23
CN.18.09 REQUIREMENTS FOR THE REQUEST FOR REGISTRATION AND GRANT. The applicant has to file within six months after the date of grant by the China Intellectual Property Office or the publication of the "Request to Record," whichever is later:
  (i) the form "Request for Registration of a Designated Patent and Grant of a Standard Patent";
  (ii) a verified copy of the published specification of the granted patent published by the China Intellectual Property Office;
  (iii) a statement indicating the derivation of the applicant's right to request registration and the prescribed documents supporting that statement if the applicant is not the same as the one recorded on the register.
The filing and advertisement fees shall be paid within one month after the earliest filing of the "Request for Registration and Grant."

Ordinance Sec. 33
CN.18.10 MAINTAINING APPLICATION FOR A STANDARD PATENT. A fee is payable for maintaining a standard patent application which has not matured to registration. This maintenance fee becomes payable on the expiration of the fifth year (and any succeeding year thereafter) calculated from the date specified in the Ordinance. The specified date is the anniversary (i.e., one year after) of the international filing date first occurring after the date of
publication of the "Request to Record" in the HKSAR. Failure to pay the maintenance fee leads to the patent application being deemed withdrawn and abandoned. However, if the applicant pays the maintenance fee and the additional fee within six months after the specified maintenance fee due date, the patent application shall be treated as if it had not been withdrawn or abandoned.

Ordinance Sec. 39
CN.18.11 RENEWAL FEES. A standard patent may be kept in force by payment of a renewal fee. The first renewal fee becomes payable on the expiration of the third year calculated from the date specified in the Ordinance. Thereafter, the renewal fee must be paid before the expiration of each succeeding year. The specified date is the anniversary (i.e., one year after) of the international filing date of the standard patent first occurring after the date of grant of the patent in the HKSAR. Failure to pay the renewal fee leads to the patent ceasing to have effect. However, if the proprietor pays the renewal fee and the additional fee within six months after the specified renewal fee due date, the patent shall be treated as if it had never expired.

CN.19.01 SHORT-TERM PATENTS. Section 125 of the Patents Ordinance provides for a short-term patent based on an international application designating China and seeking protection for a utility model.
(i) The level of inventiveness required for a short-term patent is the same as that for a standard patent.
(ii) The term of a short-term patent is shorter than for a standard patent. It shall remain in force for a period of eight years from the international filing date, subject to payment of the renewal fee.

CN.19.02 FORM FOR FILING AN APPLICATION FOR A SHORT-TERM PATENT. For filing the application for a short-term patent the use of the specified form is required. The form "Request for Grant of a Short-Term Patent" will be provided free of charge by the IPD of the HKSAR.

Ordinance Sec. 113
                         124
CN.19.03 REQUIREMENTS FOR FILING AN APPLICATION FOR A SHORTTERM PATENT. In addition to the form specified under paragraph CN.19.02, the applicant has to file:
  (i) a photocopy of the international application as published by the International Bureau;
  (ii) a photocopy of the international search report (whether contained in the international application as published or separately published);
  (iii) a photocopy of any publication of information by the China Intellectual Property Office concerning the international application;
  (iv) the date of the issuance of the National Application Notification by the China Intellectual Property Office.

CN.19.04 SPECIAL REQUIREMENTS FOR A SHORT-TERM PATENT. The applicant has to file:
  (i) in both Chinese and English: the title of the invention, the abstract and the bibliographic data;
  (ii) the name and address of the inventor if they have not been furnished in the "Request" part of the international application;
  (iii) a statement indicating the derivation of the entitlement to exercise the right to the short-term patent.

CN.19.05 FEES (MANNER OF PAYMENT). The manner of payment of the fees indicated in this chapter is outlined in Annex CN(HK).I.

Ordinance Sec. 113
                        124
CN.19.06 TIME LIMITS FOR MEETING THE REQUIREMENTS. An application for a short-term patent and the documents specified under paragraph CN.19.03 may be filed at any time within six months from entry into the national phase before the China Intellectual Property Office. The filing and advertisement fees shall be payable within one month after the earliest filing of the application.

CN.19.07 ADDRESS FOR SERVICE. The applicant is not required to appoint an agent but he is required to have an address for service in the HKSAR. The address so furnished shall be treated for the purpose of the application as the address of the applicant.

Ordinance Sec. 125
CN.19.08 RENEWAL FEES. The term of a short-term patent is eight years from the international filing date, subject to payment of the renewal fee. A renewal fee is payable if the proprietor wants to have his short-term patent in force for a further period of four years after the expiration of the fourth year from the international filing date. Failure to pay the renewal fee leads to the short-term patent ceasing to have effect. However, if the proprietor pays the
renewal fee and the additional fee are paid within six months after the specified renewal fee due date, the patent shall be treated as if it had never expired.

CN.20 RESTORATION. The Ordinance provides for the restoration of standard patent applications and patents, and the restoration of short-term patents.


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