Foreign Patent Firms Can Now Open Representative Offices in China

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The China National Intellectual Property Administration (CNIPA) released the Administrative Measures for the Establishment of Resident Representative Offices in China by Foreign Patent Agencies (外国专利代理机构在华设立常驻代表机构管理办法) on January 11, 2022 allowing foreign patent firms to open representative offices in China effective immediately. However, foreign patent firms’ representative offices will not be able to prosecute Chinese patent applications.

Once established, a representative office may engage in the following activities per Article 14:

(1) To provide the parties with patent affairs consultation in the country or region where the foreign patent agency has been approved to engage in patent agency business;

(2) Accepting the entrustment of the parties or the Chinese patent agency to handle patent affairs in the country or region where the foreign patent agency has been approved to engage in patent agency business;

(3) Accepting the entrustment of the parties or Chinese patent agencies to provide professional consulting services for Chinese enterprises’ overseas investment, overseas early warning, overseas rights protection and other patent-related matters;

(4) Representing foreign parties and entrusting Chinese patent agencies to handle Chinese patent affairs.

Chinese patent prosecution is specifically excluded:

The representative office shall carry out business activities in accordance with the law, and shall not engage in Chinese patent affairs such as agency patent applications and invalidation of patent rights, as well as Chinese legal affairs.

Further, the representative office will not be able to hire Chinese patent attorneys per Article 16.  Chinese patent attorneys will presumably need to deregister their licenses in order to work for a representative office.

The requirements to open a representative office per Article 7 include:

(1) Legally established abroad;

(2) It has substantially engaged in patent agency business for more than 5 years, and has not been subject to self-discipline or administrative punishment for practicing;

(3) The chief representative of the representative office has full capacity for civil conduct, has the qualification of a patent attorney, has patent attorney practice experience of not less than 3 years, and has not been subject to self-discipline or administrative punishment related to his/her patent practice, or criminal punishment for intentional crimes;

(4) There are more than 10 patent attorneys practicing in their home country.

CNIPA has 3 months to make a decision on whether to approve an application for a representative office.  After approval, the foreign patent agency has 90 days to apply to the registration authority to establish the representative office.

The full text of the Measures are available here (Chinese only).

Author: Aaron Wininger

Aaron Wininger is a Senior Attorney and Director of China Intellectual Property at Schwegman Lundberg & Woessner.

Author: Aaron Wininger

Aaron Wininger is a Senior Attorney and Director of China Intellectual Property at Schwegman Lundberg & Woessner.