Preliminary Examination Of Application For Patent for Invention (二)

2. Examination of Application Documents

Where the application documents do not conform to provisions of the following sections, the examiner shall notify the applicant to make rectification within the prescribed time limit. If no response has been made within the time limit, a notification that the patent application is deemed to have been withdrawn or not to have been submitted shall be made. Where a defect has not be eliminated after two rectifications have been made, a decision of rejection may be made.

2.1 Request

2.1.1 Title of Invention

Title of invention shall express briefly and accurately the title of technical subject matter of the patent application for invention seeking                                                                                                                                                                   protection. It shall not include non-technical terms, such as name of a person or   an entity, trademark, code name or model, etc. Nor shall it include any ambiguous terms also, such as "and others", "and its like" etc. General terms shall not be used if they do not provide any information about the invention. For example it is prohibited to use the terms as "method", "equipment", "composition", "compound" only as the title of the invention. Usually, no more than 25 Chinese characters can be used as the title of the invention. Under certain special circumstances, upon the consent of the examiner, the Chinese characters used as the title of the invention could be40, such as, the title of certain invention in the field of field of chemistry.

2.1.2 Inventor

Inventor shall be the person who has made creative contributions to the substantive features of the invention-creation. However, it is not necessary for the examiner to examine whether or not the inventor whose name appears in the Request meets the requirements of Rule 12 of the Regulations in the procedures of examination of the Patent Office. Inventor shall be an individual rather than an entity or collective. For example, it cannot be described as "xx subject matter group" etc. Inventor must use his/her true name instead of a pen name or pseudonym. Where there are more than one inventor, the names shall be provided in the order of from left to right.

Inventor may request the Patent Office not to disclose his/her name. Such request must be submitted by inventor himself/herself in writing. After the request of non-disclosure of the name of the inventor has been submitted, if it is considered to be in conformity with the requirements concerned after examination, the Patent Office shall not disclose the inventor's name in the Patent Gazette, description offprint, and the Patent Certificate, The inventor may not request his/her name to be published afterwards.

Foreign inventor may use his/her initials in foreign language in the Chinese translation of its/his name. The first name and the family name shall be separated by a dot which is in the middle of the two words, such as, M·Jose.

2.1.3 Applicant

2.1.3.1 Domestic Applicant

For a service invention, the right to apply for a patent belongs to the entity. While for a non-service invention, the right to apply for a patent belongs to the inventor. However, generally it is not necessary for the examiner to examine the status of the inventor indicated in the Request in the procedures of examination of the Patent Office. Where the applicant is an individual, it may be presumed that the invention is a non-service invention, and the applicant has right to apply for the patent. Under the circumstances that the subject matter of the invention is obviously not a non-service invention, the applicant shall be invited to submit a proof of non-service invention provided by the entity to which the applicant belongs. Where the applicant is an entity, it may be presumed that the invention is a service invention, and the applicant has a right to apply for the patent. Under the circumstances that the entity obviously does not possess the status of legal person or the status of legal person of that entity is questionable, such as Scientific Research Division of xx University or xx Subject Matter Group of xx Institution, the entity shall be invited to submit a certified document to support its status as a legal person.

The individual applicant shall use his/her true name; the pen name or other informal name cannot be used. Where the applicant is an entity, its full official name shall be used and the abbreviation or shorter form of the name cannot be used. The name of the entity indicated in the application documents shall be the same as appearing in the official seal of that entity.

2.1.3.2 Foreign Applicant, including Foreign Individual, Foreign Enterprise or Other Foreign Organization

It is stipulated in Art. 18 of the Patent Law that: "Where any foreigner, foreign enterprise or other foreign organization having no habitual residence or business office in China files an application for a patent in China, the application shall be treated under this Law in accordance with any agreement concluded between the country to which the applicant belong sand China, or in accordance with any international treaty to which both countries are party, or on the basis of the principle of reciprocity."

Where an examiner has any question about the nationality, business office or the location of the headquarters of the applicant indicated in the Request, he/she may invite the applicant to provide a certificate of nationality or certified document concerning the location of the headquarters of the business office in accordance with Rule 34(1) or Rule 34(2) of the Regulations. Where the applicant claims in the Request to have a business office in China, the examiner shall invite the applicant to provide a certificate provided by the local administration of industry and commerce which proves the business office concerned is a true and valid one. Where the applicant claims to have habitual residence in China, the examiner shall invite the applicant to submit the certified document provided by the public security organizations to prove he/she is able to live in China for one year or longer.

After it is affirmed that the applicant is a "foreigner, foreign enterprise or other foreign organization having no habitual residence or business office in China", examination shall be performed to determine whether or not the nationality or the country where the headquarters of the applicant is located, which was indicated in the Request, conforms to one of following three conditions:

(1) the country to which the applicant belongs has concluded an agreement with China to provide patent protection to the national of the opposite party;

(2)the country to which the applicant belongs is a member of Paris Convention for the Protection of Industrial property (Hereinafter Paris Convention);

(3)the foreigner shall be provided patent protection on the basis of the principle of reciprocity in accordance with the law of the country to which the applicant belongs.

The examination shall be started from whether or not the country to which the applicant belongs is a member of the Paris Convention (For individual applicant, it may be determined by his/her nationality and habitual residence. For an entity, it may be determined by the location of its head-quarters or true and valid business office). It is not necessary to examine whether or not there is any agreement concluded between this country and China to provide patent protection to the national of the opposite party, because all of these countries are the member States of Paris Convention.

Only when the country to which the applicant belongs is not a member State of the Paris convention, is it necessary to examine whether or not there is a principle of reciprocity to provide patent protection to the foreigners in the law of this country. Where there is no express provision to give patent protection to the foreigner on the basis of the principle of reciprocity in the law of the country to which the applicant belongs, the applicant shall be invited to submit a certified document to show that the country recognizes that Chinese citizens and entities are, under the same conditions applied to its nationals, entitled to have patent right and other related rights in that country. Where the applicant cannot submit such a document, the patent application shall be rejected according to Rule 44 of the Regulations on the ground that it does not conform to the provisions of Art. 18 of the Patent Law.

For an applicant coming from the territory or annexed territory of a member State of the Paris Convention, it shall be examined whether or not this State has declared that the Paris Convention is suitable for this territory. For an applicant coming from a non-member State of the Paris Convention which has not concluded a relevant agreement with China but has not excluded the right of a citizen of China to file a patent application in this area, the examiner shall handle the case on the basis of the principle of reciprocity.

Where the inventor is an individual, he/she may use his/her initials in foreign language. The first name and family name shall be separated by a dot in the middle of the two words, such as, M·Jose. It is prohibited to use title, including academic degree, position, etc., in the inventor's name, such as Dr. xxx, professor xxx. Where the applicant is an entity, it shall use its full official name. It is acceptable to use certain title which indicates the status of independent legal person according to the law of the country to which the applicant belongs.

2.1.3.3 Application Filed Jointly by Domestic Applicant and Foreign Applicant

Where an application is filed jointly by domestic applicant and foreign applicant, the examination shall be performed according to the provisions of 2.1.3.1. and 2.1.3.2 of this Chapter respectively.