PTC FORUM: The Online Journal of the Patent, Trademark and Copyright Research Foundation

CHINA / PATENTS / PRIORITY

Priority and Patents for Foreign Applicants in China

IIC, Vol 3 No 1, 2002

Zhu Xuezhong

In this article, the author describes the problems of patent protection, with particular reference to priority, in mainland China, Hong Kong, Macao and, eventually perhaps, Taiwan. "While mainland China adheres to the socialist system, Hong Kong and Macao maintain their former capitalist system." China acceded to the Patent Cooperation Treaty in 1994; but the Special Administrative Regions of Hong Kong and Macao do not qualify for accession to the Paris Convention for the protection of industrial property nor to the Patent Cooperation Treaty, as they are not independent parties. Foreign applicants for patents may apply directly to the patent offices of mainland China, Hong Kong and Macao; the Chinese State Intellectual Property Office (CSIPO) is more useful for inventors wishing to obtain protection in other countries. They may submit applications to the CSIPO as a Designated Office; and they may submit applications first to the CSIPO and then apply to register in Hong Kong or for an extension in Macao. As to priority, this depends on the patent laws of the Special Administrative Regions: Hong Kong law clearly specifies that anybody who has priority in a Designated Patent Office (the CSIPO, the United Kingdom Patent Office and the European Patent Office) according to a prior application in any contracting country of the Paris Convention also has priority effective in Hong Kong. Somewhat similar rules apply, mutatis mutandis, in Macao. Hong Kong and Macao are members of the World Trade Organisation; and the relevant TRIPS Agreement rules apply to priority. They may also sign agreements with certain countries, following the principle of mutual benefit or reciprocity: however, as the author points out, "there are few such countries". Within China and the Special Administrative Regions, all three jurisdictions adopt the principle of first to file and require that applications should be novel and inventive. If the later application does not have priority on the basis of prior application, foreign applicants may have difficulty securing patent protection in the other jurisdictions in China. To ensure some degree of coordination of the three patent jurisdictions, the Chinese authorities, along with the authorities of the Special Administrative Regions, are faced with a choice of harmonisation of the respective patent rules; of entering into bilateral agreements; and of creating a system approximating to that of the European Community Patent. [20066]