New Rules for Response to the Office Action
made on Chinese Trademark Application

It was recently stipulated by the Chinese Trademark Office that the applicant of a trademark application shall, when making a response to an Office Action, follow the new rules below:

1. The applicant may delete some listed items of goods/services, or narrow the scope of listed goods/services, but not broaden same.

2. The applicant shall not make any amendments to the mark itself, except for deleting the markings like "TM" or "?", etc.

3. If the mark contains the name of the applicant's enterprise, the parts known to the public shall be deemed to have been disclaimed automatically. To disclaim other parts of the mark, the applicant shall make a written statement.

4. If the mark contains generic names or designs of the goods/services, or has direct reference to the quality, main raw materials, function, use, weight, quantity or other features of the goods/services as prohibited in the items 5 and 6, paragraph 1, Article 8 of the Trademark Law, the applicant shall state to disclaim those prohibited items.

5. The amendments made to the trademark application will be limited to only once. In the case that no amendments have been made or amendments have not been made timely or after amendments have been made, the application is still deemed not meeting the relevant requirements, the application will be refused.

Increase of Official Fees for Patent Application in China
Starting from March 1, 2001, the respective official fees re the processing of Chinese patent application will be increased on an average for around double those of the current tariffs. Our attorney fees, however, remain unchanged. Some important items are indicated below for special attention:

* According to the current exchange rate, US$1 is about RMB8.27
For those applications for invention that the requests for substantive examination have not yet been made, we strongly encourage the applicant file the request before March 1, 2001 so as to save a large amount of examination fee (RMB1300) per case.
Under the new rule, the second extension of time will be available for response to the office action made on the patent application for invention. However, the official fee for the second extension will be very expensive, i.e.,RMB2000 per month. Therefore, it is advisable to avoid the second extension unless absolutely necessary to do so.
As the annuities for invention, utility model and design patents have also been increased, those annuities due after March 1, 2001 will also be charged according to the new tariffs no matter which are paid prior to or after March 1, 2001.
Besides, the official fee for restoring a right, such as right for claiming priority, right for making response to the official notice, right for entering into Chinese national phase for a PCT application, etc., has been significantly increased as well. What we would like to suggest is to make a timely action meeting various time limits, so as to avoid possible request for restoration of right.