Who benefits from Macao’s unique patent registration system?
Macau, an island constituting one of the "Special Administrative Regions" of the People's Republic of China, has a unique patent system, which is notoriously advantageous for applicants. What is the benefit exactly and who benefits?
As you may know, Macao is one of the richest regions in the world. Its GDP per capita is 86,355.4 US dollars in 2018, which is more than that of Switzerland. If a patentee wishes to have a presence in Asia, Macao is definitely not to be overlooked. But how to obtain a patent for a special administrative region of China? One of the most useful ways to file patents in foreign countries is the Patent Cooperation Treaty (PCT). However, applicants cannot choose Macao as a designated office via a PCT application. Although Macao is a member of the WTO as a customs territory, it is not a nation state and therefore cannot join the PCT.
Extension of patent
For that reason, Macao employs a unique system, the so-called "extension [from a Chinese or an EPO] patent" (art. 129 to 134 of the Industrial Property Code). When a patent is granted by the China National Intellectual Property Administration (CNIPA) or the European Patent Office (EPO), the applicant can obtain the patent for the same invention in Macao, by means of a facilitated and speedy procedure, which would otherwise often take years to examine a patent application according to all patentability criteria.
An “extension of patent” is helpful for applicants not only because they do not need to prepare separated applications but also because it omits the substantial examination, in which examiners judge as to whether the invention is 1) new, 2) has an inventive step and 3) is industrially applicable. The most important patentability criteria are novelty and inventive step, which in each jurisdiction, patent examiners assess according to their domestic law. Where examiners judge that an invention is not inventive, applicants often try to address their concerns in opposition procedures. These procedures are complex and time-consuming because they require specialized knowledge of the technology and a detailed investigation of what already is known in the field (prior art documents). In addition, the results of the substantial examination often differ from one jurisdiction to another. Therefore, the “extension of patent” option avoids the uncertainty around the outcome of a substantial examination and reduces the workload for patent applicants and the administrative sector.
Since the introduction of the “extension of patent” from the Chinese patent in 2004, the number of “extension of patent” is increasing. It is now the primary route of patent registration in Macao. Undoubtedly, the “extension of patent” has facilitated IP activity in Macao.
Benefit for society?
While facilitating patent registrations, we also have to consider the effects of the “extension of patent” procedure on the quality of patents in Macao. It is difficult to rigorously define the “quality” of patents, but legal certainty, the extent to which patentee can expect the patent to be legally valid, is one of the most important aspect of the quality of patents. Errors in granting patents bring legal uncertainty and increase the overall costs for society of a patent, for example when a right holder exercises his (wrongly granted) right against alleged infringers. In addition, invalidity proceedings would not be necessary, if the examiner had accurately judged the patentability.
Macao is accepting the results of examination by other offices. Because CNIPA or EPO are two of the greatest IP offices in the world and conduct diligent substantial examination, some may argue the quality is guaranteed. However, we have to recall the fact that Macao has its own jurisdiction and its own patent law, with its own case law. That means, patentability is assessed by other patent offices according to their laws, not those of Macao. If CNIPA’s patent examination practice does not match that of Macao, post-granted costs such as unnecessary invalidation proceedings, would offset or exceed the benefit in saving pre-granted costs through the “extension of patent”. One safeguard exists, namely the Notice of Chief Executive no. 7/2004 article 5, which confers on Macao discretion to decide whether to accept the “extension of patent”. If the safeguard is used wisely, costs can be saved on the pre-grant stage, speedy procedures benefit applicants and society does not have to carry the burden of low quality patents.
|By Tomoki Shizuno, IPKM student 2019-2020, more blogs on Law Blogs Maastricht|