Newsletter
China’s Fourth Amendment to the Patent Law - Adaptation Amendment of the Implementation Rules
I.
The 4th Amendment of Chinese Patent Law –
Major Amendments
The 4th amendment to the Chinese Patent Law
was passed on October 17, 2020, and the amended Patent Law was implemented on June 1, 2021. The 4th
amendment to the Patent Law introduces, in particular, the below-listed important changes:
1.
"Partial design" is now patentable for design patent. The
protection period of a design patent is extended to 15 years in line with the Hague Agreement, and the domestic
priority claim practice applies to design patent cases.
2.
A new provision on novelty grace period is added into the Patent Law.
Where an invention is first disclosed within six months before the patent application date for public interest
purpose due to national emergencies or exceptional circumstances, such disclosure shall not ruin the novelty of the
invention.
3.
An invention related to a method of nuclear transformation is
prescribed as a statutory unpatentable subject matter.
4.
In order to protect a patentee's reasonable patent term, a system for
patent term adjustment (PTA) is introduced into the Patent Law for the first time. If an invention patent is granted
four years after the patent application date and three years after a request for substantive examination is filed,
the China National Intellectual Property Administration (CNIPA) shall, upon the patentee’s request, compensate
the patentee for any unreasonable delay in the patent grant process; any delay caused by the patentee is not allowed
for PTA.
5.
Considering that an approval process for drug marketing may delay the
market entry of a patented drug, a system of patent term extension (PTE) for pharmaceutical-related patent is
brought into the Patent Law for the first time. For a Chinese patent covering a new drug invention, for which a
market approval is obtained in China, the CNIPA shall, upon patentee’s request, grant a PTE to the patentee.
The compensation PTE period shall not exceed five years, and the effective patent term after the drug is marketed
shall not exceed 14 years.
6.
In order to promote patent licensing and patent exploitation, an
“open patent licensing” system is introduced into the Patent Law for the first time. A patentee may
voluntarily declare to the CNIPA in writing its willingness to license its patent to any entity or individual for
exploitation, and it shall specify the licensing fee payment method and standard. The CNIPA will publish such patent
open licensing declaration for purpose of implementing open patent licensing. Any entity or individual willing to
implement an open patent licensed shall notify the patentee in writing and, after paying the licensing fee according
to the published payment method and standard, obtain the patent licensing grant.
7.
In order to make the patent right evaluation report system for utility
model patents and design patents more comprehensive and neutral, and to provide a gateway for alleged infringers to
confront against patentees, alleged infringers are now entitled to request patent right evaluation reports, in
addition to patentees and interested parties.
8.
In order to take into account the legitimate rights and interests of
patentees and prevention of abuse of patent rights, the following has been added into the Patent Law: "the
application and exercise of patent rights shall follow the principle of good faith; patent rights shall not be
abused to harm public interests or the legitimate rights and interests of others." If the abuse of patent
rights excludes or restricts competition and constitutes monopoly act, it shall be dealt with in accordance with the
Anti-Monopoly Law of the People's Republic of China.
9.
The 4th amendment of the Patent Law strengthens the handling
and punishment of patent infringers and persons committing patent passing off acts. The specific provisions under
the said amendment are as follows:
(1)
Increased punishment for patent passing off offenders: According to
Article 68 of the amended Patent Law, in addition to civil liability caused by patent passing off in accordance with
the laws, the patent administrative agency responsible for handling such patent violations shall order for
correction and publish the same as well as confiscate illegal gains, and it shall impose a fine of up to five times
of the illegal gains. If there is no illegal gain or if the illegal gain is below RMB50, 000, a fine no more than
250,000 RMB may be imposed. If the violation constitutes a crime, criminal liability shall be pursued in accordance
with the laws.
(2)
Strengthened measures for obtaining evidence: The patent administrative
agency responsible for handling patent passing off shall, based on the evidence already obtained, has the right to
take the following measures when investigating suspected acts of patent passing off acts: (a) questioning relevant
parties and investigating the circumstance related to the suspected illegal acts; (b) conducting on-site inspections
of the premises involved in the suspected illegal acts; (c) reviewing and photocopying contracts, invoices, account
books, and other relevant documents related to the suspected illegal acts; (d) inspecting products related to the
suspected illegal acts; (e) sealing or seizing products proven to be counterfeit patents. The patent administrative
agency shall, at the request of a patentee or an interested party, take the measures listed in each of items (a),
(b), and (d) above when handling patent infringement disputes. When the patent administrative agency exercises the
aforementioned powers in accordance with the laws, the parties concerned shall provide assistance and cooperation
and they shall not refuse or obstruct.
(3)
The 4th amendment of the Patent Law allows the State
Council's patent administrative agency (i.e., the China National Intellectual
Property Administration – "CNIPA") to, at the request of
a patentee or an interested party,
handle patent infringement disputes with significant national impacts. When a patent administrative agency of the
local governments handles a patent infringement dispute at the request of a patentee or an interested party, the
said agency may consolidate cases involving infringement of the same patent within its administrative jurisdiction.
For cases involving infringement of the same patent across different regions, the said agency may ask the patent
administration agency of the higher-level local government to handle the said cases.
(4)
The 4th amendment of the Patent Law provides for the
provisions related to damage compensation for patent infringement as follows:
(a)
A punitive damage claim practice has been brought into the Patent Law
for intentional patent infringement, with a maximum of five times the proven damages. For intentional infringement
of patent right with serious circumstances, the damage claim shall be determined at an amount exceeding one time but
not exceeding five times the proven damage amount as stated above. The Patent Law in effect prior to the
4th amendment mainly adopted a "filling principle” for patent infringement damage compensation
and it did not provide punitive damage claim practice. The introduction of a punitive damage claim practice into the
Chinese patent system shall better ensure the effectiveness of patent right enforcement.
(b)
The statutory compensation amount has been increased, raising the
maximum statutory compensation for patent infringement from 1 million RMB to 5 million RMB.
(c)
The amendment clearly stipulates that an infringer shall bear the
reasonable expenses incurred by the patentee to stop the infringement,and the
damage claim amount shall also include the reasonable expenses paid by the patentee to stop the infringement.
(d)
The amendment has increased the burden of proof borne by an accused
infringer. In order to determine the amount of damage claim, if a patentee has made every and all efforts to provide
evidence, but the accounting books and documents related to the infringement acts are mainly controlled by the
infringer, the people's court may order the infringer to provide the accounting books and documents related to the
infringement acts. If the infringer fails to provide or provides false accounting books and documents, the people's
court may determine the amount of damage claim based on the patentee's claim and evidence provided by the
patentee.
(e)
The amendment has strengthened the relevant preservation measures. If a
patentee or an interested party has evidence to prove that another person is infringing or about to infringe on its
patent right and that failure to stop or prevent the infringement in a timely manner would cause irreparable damage
to its legitimate rights and interests, the patentee or the interested party may, prior to filing a lawsuit,
request the people's court to conduct property preservation and/or to issue an order asking for conducting certain acts
or prohibiting certain acts. In order to stop patent infringement, if evidence may possibly become disappearing or
may become difficult to obtain in the future, the patentee or the interested party may, prior to filing a lawsuit,
request the people's court to conduct evidence preservation.
10.
The statute of limitations for filing patent infringement lawsuits has
been prescribed in the amended Patent Law as “3 years” in accordance with the provisions of the General
Principles of Civil Law. The statute of limitations for filing patent infringement lawsuits shall be 3 years
calculated from the date when the patentee or the interested party knew or should have known about the infringement
and the infringer. If someone uses an invention patent without paying appropriate compensation to the patentee
during the time period from the date of laying open publication of the invention patent case until the grant of the
patent, the statute of limitations for the patentee to demand payment of compensation shall be 3 years calculated
from the date when the patentee knew or should have known about the use of its invention by the person stated above.
However, if the patentee already knew or should have known the use of the patented invention before the grant of its
patent, the 3-year statutory of limitations calculation shall start from the date of the patent grant.
11.
The 4th amendment of the Patent Law also introduces for the
first time an early resolution mechanism for pharmaceutical patent disputes, which is as follows:
"During the process of drug marketing review and
approval, if there is a dispute between the applicant for the drug marketing approval and the concerned patentee or
an interested party regarding the patent right related to the drug under marketing approval review, the parties
concerned may file a lawsuit with the People's Court requesting for a judgment on whether the relevant technical
solution of the drug under marketing approval review falls within the scope of another party's drug patent. Within
the prescribed time period, the State Council's drug administration agency may, based on the effective judgment
issued by the People's Court, make a decision on whether to suspend the approval of the marketing of the relevant
drug. The party applying for drug marketing approval as well as the relevant patentee or interested party may also
request the State Council's patent administration agency to issue an administration decision as to the said patent
dispute. The State Council's drug administration agency in conjunction with the State Council's patent
administration agency shall jointly formulate the specific regulations governing the resolution of patent disputes
occurring during the stage of reviewing drug marketing approvals; the said specific regulations shall be implemented
after the regulations are approved by the State Council."
The above-mentioned new system is the
"pharmaceutical patent linkage system" in China, which links the approval of generic drugs with the
patents covering the original drugs, thereby avoiding infringement of the patent right covering the original drugs.
This new system provides for an early resolution mechanism for pharmaceutical patent infringement disputes.
12.
The submission deadline for priority documents for invention patent
applications and utility model patent applications has been extended through the amendment of the Patent Law. The
deadline for an applicant to submit priority document(s) for an invention patent application and a utility model
patent application has been extended from “3 months from the filing date” to “16 months from the
filing date.” The submission deadline for priority documents for design patent applications remains
unchanged (within 3 months from the filing date).
13.
The amendment of the Patent Law encourages the disposal of service
inventions by entities and motivating inventors. According to Article 6 of the amended Patent Law, employer entities
have the right to dispose of the patent rights and rights to apply for patents for service inventions in order to
promote the implementation and utilization of the relevant inventions. The aforementioned provision ensures that
employer entities have the right to and can dispose of service inventions. According to Article 15 of the amended
Patent Law, the State encourages employer entities that have been granted patent rights to implement intellectual
property right incentives, such as equity, stock options, and dividends, to ensure that inventors or designers can
reasonably share the benefits of innovations. The aforementioned provision explicitly encourages employer entities
to use equity, stock options, dividends and other methods to incentivize inventors to promote more
innovation.
II.
Temporary Measures for Handling Relevant Examination
Procedure for Implementing the Amended Patent Law Prior to the
Amendment of the Implementation Rules of the Patent Law
As mentioned earlier, the 4th amendment to the
Patent Law was passed on October 17, 2020, and the amended Patent Law came into effect on June 1, 2021. However,
more than two years have passed since the implementation of the amended Patent Law has taken effect, and the amendment of the Implementing Rules
of the Patent Law, which serves as the basis for implementing the amended Patent Law, has not yet been completed. In order to
regulate the implementation of certain amendments in the Patent Law, the CNIPA issued Announcement No. 423 Interim
Measures on May 25, 2021 and Announcement No. 510 Interim Measures on January 5, 2023, respectively, providing the
interim measures for handling examination-related matters when implementing the amended Patent Law. Regarding the
introduction of the Hague Design Patent System into China, the CNIPA issued No. 481 "Interim Measures for
Handling Relevant Matters After Joining the Hague Agreement" on April 25, 2022, and Announcement No. 511
"Interim Measures for Handling Relevant Matters After Joining the Hague Agreement" on January 5,
2023, respectively. The key points of
the aforementioned four "interim measures" are as follows:
1.
Announcement No. 423 issued on May 25, 2021 - "Interim
Measures for Handling Examination Matters When Implementing the Amended Patent Law"
As the amendment to the Implementation Rules of the
Patent Law has not been completed, the CNIPA issued Announcement No. 423 on May 25, 2021, entitled "Interim
Measures for Handling Examination Business Related to the Implementation of the Amended Patent Law"
(hereinafter referred to as "the 1st Interim Measures"). The Interim Measures mainly provide
provisions regarding the application scope of the relevant provisions after the fourth amendment to the Patent Law.
For example, the compensation for patent term extension only applies to invention patents granted and issued on or after June 1, 2021, and the protection
period for design patents is extended to fifteen years only for design applications filed on or after June 1, 2021.
The key points of the Interim Measures are as follows:
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Concerned Article of the 1st Interim Measures
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Concerned Article of the Amended Patent Law
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Special Note
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Article 1
On or after June 1, 2021, a patent applicant may file a design patent
application covering the external design of a part of a specific article (“partial design) through
paper filing or electronic filing in accordance with Article 2, Paragraph 4 of the amended Patent Law. The
CNIPA will examine the aforementioned design application after the amendment of the Implementation Rules of
the Patent Law takes effect.
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Article 2, Paragraph 4
A design refers to a new design related to a new design of the shape, pattern, or their
combination, or the combination
of color and shape or pattern of the entire article or a design prescribed above and
applicable to a part of an
article, which is aesthetically pleasing and suitable for industrial
application.
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A "partial design" is an eligible subject matter of design patent
protection.
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Article 2
For a patent application filed on or after June 1, 2021, if the applicant
believes that the circumstances specified in Article 24, Paragraph 1 of the amended Patent Law exist, a
request can be submitted in paper form. The CNIPA will examine such patent application after the amendment
of the Implementation Rules of the Patent Law takes effect.
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Article 24,
Sub-paragraph 1
If an invention or a creation, for which an invention patent application or
a utility model patent application is filed, has been, for the first time, publicly disclosed within six
months before the patent filing date under the following circumstances, the novelty of the said invention or
creation shall not be lost: (1) It was first disclosed for public interest purposes when there exists a
national emergency or an extraordinary situation in China.
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Novelty
grace period applies in case of the first public disclosure of an invention or a creation for public interest
purposes.
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Article 3
For a design patent application filed on or after June 1, 2021, the
applicant may claim priority for the said design patent application in accordance with Article 29, Paragraph
2 of the amended Patent Law. The CNIPA will examine the aforementioned design patent application and the
priority patent application that serves as the basis for priority claim after the amendment of the
Implementation Rules of the Patent Law takes effect.
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Article 29, Paragraph 2
Within twelve months from the date of filing the first patent application
for an invention or for a utility model in China, or within six months from the date of filing the first
design patent application in China, if the applicant files a patent application with the CNIPA for the same
subject matter, it may enjoy priority claim right.
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Applicants for deign patent applications filed in China may claim domestic
priority for the Chinese design patent applications.
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Article 4
For a patent application filed on or after June 1, 2021, the applicant may
submit a certified priority document for the first-filed patent application in accordance with Article 30 of
the amended Patent Law.
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Article 30
If an applicant claim priority for an invention patent application or for a
utility model patent application, a written declaration for priority claim shall be submitted at the time of
patent filing, and a certified priority document for the first-filed patent application should be submitted
within sixteen months from the filing date of the first-filed patent application. If an applicant claim
priority for a design patent application, a written declaration for priority claim shall be submitted at the
time of patent filing, and a certified priority document for the first-filed patent application should be
submitted within three months from the filing date of the first-filed patent application.
Failure to submit a certified priority document within the specified time
period shall be deemed as not claiming priority.
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For invention and utility model patent applications, the deadline for
submitting a certified priority document is extended to within sixteen months from the filing date of the
first-filed patent application.
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Article 5
For an invention patent case granted and published on or after June 1, 2021,
the patentee may, within three months from the date of the patent grant publication, submit a request for
patent term adjustment in paper form in accordance with Article 42, Paragraph 2 of the amended Patent Law.
The patentee shall subsequently pay the relevant fees according to the payment notice issued by the CNIPA.
The CNIPA will review the aforementioned request for patent term adjustment after the amendment of the
Implementation Rules of the Patent Law takes effect.
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Article 42, Paragraph 2
If an invention patent is granted four years after the patent filing date
and three years after the date of filing a request for substantive examination, the CNIPA shall, upon the
request by the patentee, allow an adjustment of the patent term for unreasonable delays made in the patent
grant process of the invention patent; the patent term adjustment shall not apply if the delay is caused by
the patent applicant.
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For an invention patent, an adjustment of its patent term can be requested
and granted due to unreasonable delays made in the patent grant process.
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Article 6
Starting from June 1, 2021, a patentee
may, in accordance with Article 42, Paragraph 3 of the amended Patent Law, submit a request for patent term
extension in paper form within three months from the date of approval of the application for new drug
marketing permit, and the patentee may subsequently pay the relevant fees as required by a payment notice
issued by the CNIPA. The CNIPA will examine the aforementioned application for patent term extension after
the amendment of the Implementation Rules of the Patent Law takes effect.
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Article 42, Paragraph 3
To compensate for the time occupied by the review and approval of a new drug
marketing permit, the CNIPA shall, upon the request by the patentee, grant patent term extension for the
concerned invention patent granted in China covering the approved new drug. The extension time period shall
not exceed five years, and the total effective patent term shall not exceed fourteen years from the date of
approval of the new drug marketing permit.
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The drug patent term adjustment practice was brought into China to
compensate for the time occupied by the review and approval of a new drug marketing permit.
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Article 7
Starting from June 1, 2021, a patentee may voluntarily file a declaration
for open licensing of its patent in paper form, in accordance with Article 50, Paragraph 1 of the amended
Patent Law. The CNIPA will review such open licensing declaration after the amendment of the Implementation
Rules of the Patent Law takes effect.
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Article 50, Paragraph 1
A patentee may voluntarily file a declaration in writing with the CNIPA as
to its willingness to grant licensing of its patent to any entity or individual and the patentee shall also
state the payment method and standard for paying license fees. The aforementioned open licensing declaration
shall be announced by the CNIPA for open licensing purpose. For open licensing declaration covering a
utility model patent or a design patent, a patent right evaluation report should be provided when declaring
for open licensing.
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The patent open licensing practice was brought into China for the first
time.
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Article 8
Starting from June 1, 2021, an accused infringer may file a request with the
CNIPA for issuance of a patent right evaluation report in paper form in accordance with Article 66 of the
amended Patent Law.
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Article 66, Paragraph 2
In a patent infringement dispute involving a utility model patent or a
design patent, the people's court or the patent administration may request the patentee or an interested
party to provide a patent right evaluation report issued by the CNIPA after conducting searches, analysis,
and evaluation of the concerned utility model patent or design patent, which will be used as evidence for
the trial for handling the patent infringement dispute. The patentee, interested party, or accused infringer
may also voluntarily provide a patent right evaluation report.
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An accused infringer may also request the CNIPA to issue a patent right
evaluation report.
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Article 9
Starting from June 1, 2021, the CNIPA shall conduct the preliminary
examination, the substantive examination and the reexamination of a patent application in accordance with
Article 20, Paragraph 1 and Article 25, Paragraph 1, Item (5) of the amended Patent Law.
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Article 20, Paragraph 1
The application for patent and the exercise of patent right shall be
conducted in accordance with the principles of good faith. Patent right shall not be abused to harm the
public interest or the legitimate rights and interests of other persons.
Article 25, item (5)
Patent right shall not be granted for the following: (5) Methods of nuclear
transformation and the substances obtained by means of nuclear transformation.
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The principle of good faith is introduced into the Patent Law, and it is
stipulated that patent right shall not be granted for methods of nuclear transformation and the substances
obtained by means of nuclear transformation.
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Article 10
The protection term for a design patent with a filing date on or before May
31, 2021 shall be ten years calculated from the patent filing date.
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Article 42, Paragraph 1
The protection term of an invention patent is twenty years, the term of a
utility model patent is ten years, and the term of a design patent is fifteen years, all calculated from the
patent filing date.
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The patent protection term for a design patent has been extended from ten
years to fifteen years.
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Article 11
This Interim Measures shall come into effect on June 1, 2021.
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2.
"Interim Measures for Handling Examination Matters When
Implementing the Amended Patent Law" Announced on January 5, 2023 via Announcement No. 510.
Since the amendment of the Implementation Rules of the
Patent Law has not been finished, the
CNIPA issued Announcement No. 510 on January 5, 2023,entitled "Interim
Measures for Handling Examination Matters When Implementing the Amended Patent Law" (hereinafter referred to as
the "2nd Interim Measures"), which took effect from January 11, 2023. The 1st
Interim Measures announced on May 25, 2021 via Announcement No. 423 became abolished from January 11, 2023. The
2nd Interim Measures consist of 12 articles, covering the original content of 5 articles in the
1st Interim Measures. However, 6 articles in the 1st Interim Measures have been amended and a
new Article 10 has been added. The main content of the amendments and additions into the 2nd Interim
Measures are as follows:
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1st Interim Measures
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2nd Interim Measures
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Main Content of the 2nd Interim Measures
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Article 1
On or after June 1, 2021, a patent applicant may file a design patent
application covering the design of a part of a specific article ("partial design") through paper
filing or electronic filing in accordance with Article 2, Paragraph 4 of the amended Patent Law. The CNIPA
will examine the aforementioned design application after the amendment of the Implementation Rules of the
Patent Law takes effect.
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Article 1
On or after June 1 2021, a patent applicant may file a design patent
application covering a partial design pursuant to Article 2, Paragraph 4 of the Patent Law, and the patent
filing can be done through paper filing or electronic filing.
When filing a design patent application covering a partial design, the
applicant must submit to the Patent Office the drawing(s) of the whole product and identify the claimed
partial design(s) by using dotted lines and solid lines. If the partial design is a 3-dimensional design,
the drawings must include a 3-dimensional drawing(s) clearly showing the partial design. If the applicant
does not identify the partial design by using dotted lines and solid lines in the drawing(s) of the whole
product, it shall disclose in the brief description the claimed partial design.
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It specifies the disclosure manner of the drawings and the brief
description of partial designs, and it indicates that the CNIPA may begin to examine the partial design
patent applications before the issuance of the amended Patent Implementing Regulations.
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Article 2
For a patent application filed on or after June 1, 2021, if the applicant
considers that the circumstances specified in Article 24, Paragraph 1 of the amended Patent Law exist, a
request may be filed in paper form. The CNIPA will examine such patent application after the amendment of
the Implementation Rules of the Patent Law takes effect.
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Article 2
From the date of implementing this Tentative Measures, for a patent
application filed on or after June 1, 2021, if the applicant considers that the circumstances specified in
Article 24, Paragraph 1 of the Patent Law exist, a request may be submitted in paper form or in electronic
filing form. The CNIPA will examine such patent application after the amendment of the Implementation Rules
of the Patent Law takes effect.
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A patent applicant is allowed to claim the novelty grace period based on the
first public disclosure of an invention or a utility model creation for public interest purposes in not only
paper form but also in electronic filing form.
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Article 3
For design patent application with a filing date on or after June 1, 2021,
the patent applicant may submit a written declaration claiming domestic priority for the said design patent
application in accordance with Article 29, Paragraph 2 of the amended Patent Law. The CNIPA will examine
such design patent application and the earlier filed patent application based on which the priority claim is
declared, after the amendment of the Implementation Rules of the Patent Law takes effect.
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Article 3
For a design patent application with a filing date on or after June 1, 2021,
the patent applicant may submit a written declaration claiming domestic priority for the said design patent
application in accordance with Article 29, Paragraph 2 of the Patent Law.
For a design patent applicant filed with domestic priority claim, if the
earlier filed patent application is a design patent application, the applicant may file a design patent
application covering the same subject matter. If the earlier filed patent application is an invention patent
application or a utility model patent application, the applicant may file a design patent application
covering the design shown in the drawings of the earlier filed patent application.
For a design patent application filed with domestic priority claim, the earlier
filed patent application shall be deemed as having been withdrawn from the date of filing the later-filed
design patent application, except for the situation that a design patent application is filed with domestic
priority claim based on an earlier filed invention patent application or utility model patent
application.
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Prior to the implementation of the amendment to the Implementation Rules of
the Patent Law, the CNIPA may start examining design patent applications filed with domestic priority claims
in order to implement the new practice of allowing design patent applicants to claim domestic priority
claims under the amended Patent Law.
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Article 4
For a patent application filed on or after June 1, 2021, the applicant may submit a certified priority document for the
first-filed patent application in accordance with Article 30 of the amended Patent Law.
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(No amendment)
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Article 5
For an invention patent case granted and published on or after June 1, 2021,
the patentee may, within three months from the date of the patent grant publication, submit a request for
patent term adjustment in paper form in accordance with Article 42, Paragraph 2 of the amended Patent Law.
The patentee shall subsequently pay the relevant fees according to the payment notice issued by the CNIPA.
The CNIPA will review the aforementioned request for patent term adjustment after the amendment of the
Implementation Rules of the Patent Law takes effect.
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(No Amendment)
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Article 6
Starting from June 1, 2021, a patentee
may, in accordance with Article 42, Paragraph 3 of the amended Patent Law, submit a request for patent term
extension in paper form within three months from the date of approval of the application for new drug
marketing permit, and the patentee may subsequently pay the relevant fees as required by a payment notice
issued by the CNIPA. The CNIPA will examine the aforementioned application for patent term extension after
the amendment of the Implementation Rules of the Patent Law takes effect.
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(No Amendment)
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Article 7
Starting from June 1, 2021, a patentee may voluntarily declare to offer open
licensing of its patent in paper form in accordance with Article 50, Paragraph 1 of the amended Patent Law.
The CNIPA will review such declaration after the amendment of the Implementation Rules of the Patent Law
takes effect.
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Article 7
Starting from the date of implementing this Interim Measures, a patentee may voluntarily
declare to offer open licensing of its patent in paper form or in electronic filing form in accordance with
Article 50, Paragraph 1 of the Patent Law. The CNIPA National Intellectual Property Office will review such
declaration as filed on or after June 1, 2021 after the amendment of the Implementation Rules of the Patent
Law takes effect.
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A declaration to offer open licensing of a patent can also be submitted in
electronic filing form.
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Article 8
Starting from June 1, 2021, an alleged infringer may request the CNIPA to
issue a patent right evaluation report in paper form pursuant to Article 66 of the amended Patent
Law.
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Article 8
Starting from the date of implementing this Interim Measures, an alleged infringer may request the CNIPA to issue a
patent right evaluation report in paper form or in electronic filing form pursuant to Article 66 of the
Patent Law.
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A request for issuing a patent right evaluation report can be submitted in
electronic filing form.
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Article 9
Starting from June 1, 2021, the CNIPA shall conduct the preliminary
examination, the substantive examination and the reexamination of a patent application in accordance with
Article 20, Paragraph 1 and Article 25, Paragraph 1, Item (5) of the amended Patent Law.
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(No Amendment)
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Article 10 (Newly Added)
If an applicant is dissatisfied with a decision issued by the CNIPA in
accordance with this Interim
Measures, it may apply for administrative reconsideration, apply for reexamination and/or file an
administrative lawsuit in accordance with the relevant laws.
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Article 10 is a new provision. The choices of corresponding remedies shall
be made based on the nature of the specific decision, and the choice of the said remedial procedure shall be
in line with the current practices for remedies against the concerned un-favorable decision.
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Article 10
The patent term for a design patent as filed on or before May 31, 2021 shall
be ten years, starting from its filing date.
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Article 11
The patent term for a design patent as filed on or before May 31, 2021 shall
be ten years, starting from its filing date.
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The amendment only relates to wording change.
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Article 11
This Tentative Measures shall come into effect on June 1, 2021.
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Article 12
This Tentative Measures shall come into effect on January 11, 2023.
The "Interim Measures for Handling Examination Matters When Implementing the Amended Patent Law"
(Announcement No. 423 released by the CNIPA – the 1st Tentative Measures) which came into
effect on June 1, 2021, shall be simultaneously abolished.
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3.
Announcement No. 481 issued on April 25, 2022, entitled
"Interim Measures for Handling Related Matters after Joining the Hague Agreement"
The 4th amendment to the Patent Law came into
effect on June 1, 2021, which includes amendments in response to China's accession to the Hague Agreement Concerning
the International Registration of Industrial Designs. Specifically, the protection period for a design patent has
been extended from 10 to 15 years. China submitted its instrument of accession to the World Intellectual Property
Organization (WIPO) for the Geneva Act of the Hague Agreement (1999) on February 5, 2022. The Hague Agreement came
into effect in China on May 5, 2022.
As the Implementation Rules in line with the
4th amendment to the Patent Law are still under amendment, the CNIPA issued Announcement No. 481 on April
25, 2022, regarding the interim measures for handling related matters after joining the Hague Agreement. These
measures, referred to as “the 1st Interim Measures for Hague Industrial Design Applications"
took effect on May 5, 2022. Applicants filing international design applications under the Hague Agreement shall
follow the procedure specified in the 1st Interim Measures for Hague Industrial Design
Applications.
The 1st Interim Measures for Hague Industrial
Design Applications consists of 9 articles, which provide the general direction for implementing the international
application process of industrial designs. The key points are as follows:
1.
Article 1 specifies the submission methods for filing international
design applications under the Hague Agreement (“Hague international design applications”). The first
Paragraph states that an eligible patent applicant can file a Hague international design application starting from
May 5, 2022. The second Paragraph of the same Article specifies the following ways to submit Hague international
design applications:
(1)
Directly submit the application to the International Bureau of the
World Intellectual Property Organization (referred to as "the Bureau"), and the application text can be in
English, French, or Spanish; or
(2)
Request the CNIPA to transfer the filed Hague international design
patent application to the Bureau, and the application text must be in English.
According to Paragraph 3 of Article 1, for Hague
international design applications submitted through the method mentioned in Item (2) above, the relevant materials
should be submitted in paper form or in electronic filing form in accordance with the requirements set forth in the
Hague Agreement and the requirements implemented by the CNIPA. The submission methods include paper form (in person
or by mail) and electronic filing form. According to Paragraph 4 of Article 1, during the time period of
implementing the 1st Interim Measures for Hague Industrial Design Applications, patent applicants should
directly pay the relevant fees to the Bureau.
2.
Currently, the Implementation Rules of the Patent Law and the Patent
Examination Guidelines are still under review. Article 2 of the 1st Interim Measures for Hague Industrial
Design Applications explicitly states that after the amendment of the Implementation Rules of the Patent Law and the
amendment of the Patent Examination Guidelines come into effect, the CNIPA will examine Hague international design
applications designating China in accordance with Article 19, Paragraph 3 of the Patent Law, the amended
Implementation Rules of the Patent Law, and the amended Patent Examination Guidelines.
3.
Article 3 specifies the relevant operational forms for claiming
priority for Hague international design applications. If an applicant claims priority for a Hague international
design application with China being designated, the following actions should be completed within three months from
the publication date of the Hague international design application: (1) submit the priority document (if not
submitted when filing the Hague international design application); (2) submit the document proving the assignment of
the priority claim right (if the applicant shown on the priority document is different from the applicant filing the
Hague international design application); and (3) pay the priority claim fee. On or before the date of implementing
the amendment of the Implementation Rules of the Patent Law, the priority claim fee should be paid within three
months from the date on which the amended Implementation Rules of the Patent Law come into effect; failure to meet
the above deadline will be considered as not having claimed priority.
4.
Article 4 concerns the rules for handling divisional applications.
According to this Article, an applicant may file a divisional application within two months from the publication
date of its Hague international design application. A divisional application is considered a regular national
application and is subject to the same handling principles for domestic and foreign design divisional applications
filed through non-Hague routes.
5.
According to Article 5, the novelty grace period as prescribed in
Paragraphs 2 & 3 of Article 24 of the Chinese Patent Law applies to a Hague international design application,
and the applicant shall fulfill the following requirements: (1) submit a declaration for novelty grace period at the
time of filing the Hague international design application, and (2) submit relevant supporting documents to the CNIPA
within two months from the publication date of the Hague international design application. Failure to submit a
declaration stated above or failure to submit supporting documents in time will result in the inapplicability of the
provisions of Article 24 of the Chinese Patent Law.
6.
According to Article 6, the applicants of a Hague international design
application shall pay the prescribed fees in accordance with the regulations implemented by the International Bureau
and the CNIPA. The CNIPA will establish and announce the payment standards and fee reduction policies for the
“separate designation fee” for Hague international design applications. For Hague international design
applications filed after the date of implementing the fee reduction policies, the applicants may request a reduction
of the separate designation fees as stipulated.
7.
According to Article 7, when there is a change in the applicant or
patentee of a Hague international design application, the applicant shall submit proof of the change in the
applicant or patentee to the CNIPA, in addition to completing the relevant procedures with the International Bureau.
If the proof is in a foreign language, a Chinese translation should be provided simultaneously. In case of a failure
to submit the proof or submission of inadequate proof, the CNIPA shall notify the International Bureau that the
change has not taken effect in China.
8.
According to Article 8, when the applicant of a Hague international
design application needs to handle other legal procedures and matters not specified in the 1st Interim
Measures for Hague Industrial Design, it shall make requests in accordance with the provisions of the Hague
Agreement, the Chinese Patent Law and its Implementation Rules and China’s Patent Examination
Guidelines.
9.
According to Article 9, the 1st Interim Measures for Hague
Industrial Design came into effect from May 5, 2022.
The 1st Interim Measures for Hague Industrial
Design provide the general guidelines for filing Hague international design applications filed on or after May 5,
2022. The specific procedures for handling Hague international design applications shall still depend on the
amendments to the Implementation Rules of the Chinese Patent Law and the amendment of China’s Patent
Examination Guidelines.
4.
Announcement No. 511 of January 5, 2023, entitled
"Interim Measures for Handling Related Matters After Joining the Hague Agreement"
To ensure the smooth implementation of the Hague
Agreement in China and to respond to the urgent examination needs of domestic and foreign entities, the CNIPA
amended the previous "Interim Measures for Handling Related Matters after Joining the Hague Agreement"
(i.e., the 1st Tentative Measures for Hague Design Patent Applications”), and announced the
revised "Interim Measures for Handling Related Matters after Joining the Hague Agreement" (hereinafter
referred to as “the 2nd Interim Measures for Hague Industrial Design Applications") on January
4, 2023, which took effect from January 11, 2023. The original "Interim Measures for Handling Related Matters
after Joining the Hague Agreement (i.e., “the 1st Tentative Measures for Hague Industrial Design
Patent Applications" issued on April 25, 2022 became abolished from January 11, 2023.
The "2nd Interim Measures for Hague
Industrial Design Applications" consists of 16 articles, covering the original content of 9 articles in the
"1st Interim Measures for Hague Industrial Design Applications." However, 4 articles in the
original measures were amended and a new provision (Article 7) was added into "2nd Interim Measures
for Hague Industrial Design Applications". The main contents of the amendments and additions in the
"2nd Interim Measures for Hague Industrial Design Applications" are as follows:
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The 1st Tentative Measures for Hague Industrial Design
Applications
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The 2nd Tentative Measures for Hague Industrial Design
Applications
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Main Points of the 2nd Tentative Measures for Hague
Industrial Design Applications
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Article
1
Starting
from May 5, 2022, a Chinese entity or a Chinese individual may, in accordance with Article 19, Paragraph
2 of the Patent Law, file an international application for registration of industrial design based on
the Hague Agreement Concerning the International Registration of Industrial Designs (1999 Act)
(hereinafter referred to as the "Hague Agreement").
An
applicant may directly submit to the International Bureau of the World Intellectual Property
Organization (hereinafter referred to as the "International Bureau") an international
application for registration of industrial design, or it may submit such application in English language
through the CNIPA.
For
an application for international registration of industrial designs that is submitted through the CNIPA,
the relevant filing materials shall be submitted in paper form or in electronic filing form in
accordance with the requirements of the Hague Agreement and the CNIPA’s requirements.
The
relevant fees prescribed by the Hague Agreement shall be paid directly by an applicant to the
International Bureau.
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Article
1
Starting
from May 5, 2022, a Chinese entity or a Chinese individual may, in accordance with Article 19, Paragraph
2 of the Patent Law, file an international application for registration of industrial design based on
the Hague Agreement Concerning the International Registration of Industrial Designs (1999 Act)
(hereinafter referred to as the "Hague Agreement").
An
applicant may directly submit to the International Bureau of the World Intellectual Property
Organization (hereinafter referred to as the "International Bureau") an international
application for registration of industrial design, or it may submit such application in English language
through the CNIPA.
For
an application for international registration of industrial designs that is submitted through the CNIPA,
the relevant filing materials shall be submitted in paper form or in electronic filing form in
accordance with the requirements of the Hague Agreement and the CNIPA’s requirements.
The
relevant fees prescribed by the Hague Agreement shall be paid directly by an applicant to the
International Bureau.
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(No Amendment)
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Article 2 (Newly Added)
An application for international registration of industrial design designating China as filed in accordance
with the Hague Agreement, of which the international registration date is confirmed (hereinafter referred to
as "international design application") shall be deemed as a design patent application filed with
the CNIPA. The aforementioned international registration date shall be considered as the filing date as
prescribed in Article 28 of the Patent Law.
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The definition of "filing date of an international design
application" is provided in Article 2.
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Article 2
For an application filed for international registration of an industrial design with China be designated
(hereinafter referred to as "international design applications"), the CNIPA shall handle it in
accordance with Paragraph 3, Article 19 of the Patent Law, the amendment of the Implementation Rules of the
Patent Law as well as the amendment of the Patent Examination Guidelines.
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Article 3
For an international design application, the CNIPA shall handle it in accordance with the Patent Law, the
Implementation Rules of the Patent Law and the Patent Examination Guidelines.
Starting from the date of implementing of this Interim Measures ("2nd Interim Measures for
Hague Industrial Design Applications"),the CNIPA shall assign a national patent application number to
the said international design application, conduct examinations, and notify the International Bureau of the
examination results.
If no ground for rejection is found during theexamination of the international design applications, the
CNIPA shall make a decision to grant protection and notify the International Bureau of the decision.
If the international design application is found not complying with the provisions of the Patent Law and its
Implementing Regulations, the CNIPA shall issue a rejection notice to the International Bureau.
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The "2nd Interim Measures for Hague Industrial Design
Applications" further specifies the basis for examination of international design applications and
the procedures for notifying the International Bureau of examination decisions issued by the CNIPA.
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Article 4 (Newly Added)
If, as published by the International Bureau, an international application for industrial design
registration includes a description of the essential features of the claimed design, shall be deemed that
the applicant has fulfilled the requirement for submitting a brief description as prescribed.
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A description of the claimed design submitted for an international
application shall be considered as a brief description required for a Chinese design application.
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Article 5
(Newly Added)
For an application for international industrial design registration, the applicant shall submit response
briefs prepared in Chinese language. If any amendment to the said patent application is made, the applicant
shall use English language to handle the amendment.
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When submitting responses to examination opinion or decisions
issued for an international application for industrial design registration,the said responses must be
prepared in Chinese language. When making amendment to the said
international application, the amendment shall be made in English language.
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Article 3
If an applicant claims for priority but fails to submit a certified priority document at the time of filing
the international design application, the applicant shall submit the said priority document to the CNIPA
within three months from the date of publishing the international design application.
If the applicant named in the earlier filed application differs from that named in the later filed patent
application, the applicant shall submit relevant supporting documents to the CNIPA within three months from
the date of publishing the international application.
If an applicant claims priority for an international application, the applicant shall pay the priority claim
fee to the CNIPA within three months from the date of publishing the international application; if the
publication date of the international application is earlier than the date of implementing the amendment to
the Implementation Rules of the Patent Law, the aforementioned fee shall be paid within three months from
the date of implementing the amended Implementation Rules of the Patent Law.
If the applicant fails to submit the required priority document within the prescribed time period, or if it
fails to submit the relevant supporting documents or fails to pay or pay in full the priority claim fee
within the prescribed period, it shall be deemed that priority claim has not been made.
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Article 6
For an international application for industrial design registration, the CNIPA will not charge a priority
claim fee.
If an applicant makes priority claim but fails to submit a certified priority document for the earlier filed
application at the time of filing the international design application, it must submit the said priority
document to the CNIPA within three months from the date of publishing the international application.
If the applicant named in the priority document of the earlier filed application differs from that listed in
the later filed application, the applicant must submit relevant supporting documents to the CNIPA within
three months from the date of publishing the international application.
If the applicant fails to submit a priority document for the earlier filed application or it fails to submit
the relevant supporting documents within the specified time frame, it will be considered as priority claim
not made. An international design application that is considered as not claiming priority will not be
subject to the provisions of Article 6 of the Implementation Rules of the Patent Law.
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The 2nd Interim Measures for Hague Industrial Design
Applications explicitly stated the following: For an application for international industrial design
registration, the CNIPA will not charge priority claim fee; if the applicant named in the
earlier filed application differs from that listed in the later filed application, the applicant must
submit a priority document for the earlier filed application and other relevant supporting
documents.
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Article 7 (Newly Added)
When an applicant of an international application for industrial design responds to a rejection notice,
applies for reexamination or handles other patent-related matters, unless otherwise specified in the
Implementation Rules of the Patent Law, the applicant shall comply with the requirements set forth in
Paragraph 1, Article 18 of the Patent Law.
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The following is newly added: "When an applicant handles the
prescribed matters for an application for international industrial design registration, it shall act as
prescribed in Paragraph 1, Article 18 of the Patent Law unless it is otherwise specified in the
Implementation Rules of the Patent Law."
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Article 4
The applicant of an application for international industrial design registration may file divisional
application(s) with the CNIPA within two months from the date of publishing the international application.
The CNIPA shall handle the divisional application(s) in accordance with the relevant provisions of the
Patent Law and its Implementation Rules as well as the Patent Examination Guidelines.
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Article 8
The applicant of an application for international industrial design registration may file divisional
application(s) with the CNIPA within two months from the date of publishing the international application.
The CNIPA shall handle the divisional application(s) in accordance with the relevant provisions of the
Patent Law and its Implementation Rules as well as the Patent Examination Guidelines.
If the applicant files a divisional application as a response to an examination opinion or decision, such
divisional application shall be filed within two months from the date of domestic publication of the
original/parent application. After the expiration of the above-mentioned deadline, or if the original/parent
application has been rejected, or if the original/parent application is deemed to be withdrawn with no
application right restored, no further divisional application shall, in general, be filed.
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The 2nd Interim Measures for Hague Design Applications further specified
the timing and restrictions for filing divisional applications.
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Article 5
If the applicant of an application for international industrial design considers that the design involved in
the said international application involves any of the circumstances stated in Article 24, Sub-paragraph (2)
or Sub-paragraph (3) of the Patent Law, it shall file a declaration at the time of filing the application
for international industrial design registration and submit relevant supporting documents to the CNIPA
within two months from the date of publishing the international application, along with an explanation. If
the applicant fails to file the said declaration or fails to submit the required supporting documents,
Article 24 of the Patent Law shall not apply to the said patent application.
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Article 9
If the applicant of an application for international industrial design considers that the design involved in
the said international application involves any of the circumstances stated in Article 24, Sub-paragraph (2)
or Sub-paragraph (3) of the Patent Law, it shall file a declaration at the time of filing the application
for international industrial design registration and submit relevant supporting documents to the CNIPA
within two months from the date of publishing the international application, along with an explanation. If
the applicant fails to file the said declaration or fails to submit the required supporting documents,
Article 24 of the Patent Law shall not apply to the said patent application.
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(No Amendment)
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Article 6
The relevant fees paid by a patent applicant for an application for international industrial design
registration shall be paid in full amount in accordance with the regulations implemented by both the
International Bureau and the CNIPA.
Fees for separate designation for international design applications as well as the concerned fee reduction
standards shall be announced separately.
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Article 10
The relevant fees paid by a patent applicant for an application for international industrial design
registration shall be paid in full amount with using the national application number or international
registration number marked in accordance with the regulations implemented by both the International Bureau
and the CNIPA. The payment standards for designation fees for applications for international industrial
design shall be implemented in accordance with the "CNIPA's Announcement on Matters Concerning Annuity
Fees and Designation Fees for Design Patent Cases".
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Further clarification is provided on the fee payment standards for
applications for international industrial design.
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Article 7
For an applicant or a patentee of an application for international industrial design registration, who
applies for change of patent ownership, in addition to completing the relevant procedures with the
International Bureau, the applicant shall also submit supporting documents to the CNIPA. If the supporting
documents are made in a foreign language, a Chinese translation of the document title should be submitted as
well. If no supporting documents are submitted or if the supporting documents are deemed inadequate, the
CNIPA shall notify the International Bureau that the change of patent ownership has not taken effect in
China.
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Article 11
For an applicant or a patentee of an application for international industrial design registration, who
applies for change of patent ownership, in addition to completing the relevant procedures with the
International Bureau, the applicant shall also submit supporting documents to the CNIPA. If the supporting
documents are made in a foreign language, a Chinese translation of the document title should be submitted as
well. If no supporting documents are submitted or if the supporting documents are deemed inadequate, the
CNIPA shall notify the International Bureau that the change of patent ownership has not taken effect in
China.
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(No Amendment)
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Article 12 (Newly Added)
After the application for international industrial design registration is granted and published, the
applicant of the international application may request the CNIPA to issue a copy of the patent register for
the granted international design as proof for seeking protection in China.
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It is specifically stipulated that after an application for international
industrial design registration is granted, the applicant may request the CNIPA to issue a copy of the
patent register as a proof for enforcing patent right.
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Article 13 (Newly Added)
In case of an invalidation action filed against an international design registration, if the patentee does
not have a domicile in China, delivery of invalidation action documents may be served by mail, fax, email,
public notice etc. If service is made by public notice, it shall be deemed that the service has been made
one month from the date of the public notice.
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Service methods for foreign parties in respect of invalidation actions
against international industrial design registrations are specifically stated.
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Article 14 (Newly Added)
If an applicant is dissatisfied with a decision issued by the CNIPA in accordance with the 2nd
Interim Measures for Hague Design Applications, it may apply for administrative reconsideration, apply for
reexamination, or file an administrative suit in accordance with the relevant laws.
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A new provision is added as to the "remedial procedures available for
dissatisfaction with decisions made by the CNIPA regarding applications for international industrial
design registrations"
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Article 8
When an applicant for an application for international industrial designs registration handles procedures
and matters not provided for in the 1st Interim Measures for Hague Design Applications, such
procedure and matter shall be handled in accordance with the Hague Agreement, the Patent Law and its
Implementation Rules and the Patent Examination Guidelines.
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Article 15
When an applicant for an application for international industrial designs registration handles procedures
and matters not provided for in the 2nd Interim Measures for Hague Design Applications, such
procedure and matter shall be handled in accordance with the Hague Agreement, the Patent Law and its
Implementation Rules and the Patent Examination Guidelines.
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(No Substantive Amendment)
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Article 9
The 1st Interim Measures for Hague Design Applications shall come into effect from May 5, 2022.
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Article 16
The 2nd Interim Measures for Hague Design Applications shall come into effect from January 11,
2023. The "1st Interim Measures for Hague Design Applications under Announcement No. 481
released by the CNIPA originally taking effect from May 5, 2022 shall be simultaneously abolished.
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The 2nd Interim Measures for Hague Design Applications clearly
stipulates its implementation date and the abolishment of the 1st Interim Measures for
Hague Design
Applications
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III.
Current Status of Amendment of the Implementation Rules of the
Patent Law
As mentioned above, the 4th amendment to the
Patent Law was passed on October 17, 2020 and came into effect on June 1, 2021. It is understood that the relevant
studies and analysis work for the 4th amendment to the Patent Law was initiated in 2014, and the CNIPA
subsequently initiated studies and analysis work for the amendment of the Implementation Rules of the Patent Law.
After the announcement and implementation of the 4th amendment to the Patent Law, the CNIPA has
continuously solicited suggestions, comments and opinion from various sectors of industry, government, and academia,
and the CNIPA, for the first time, proposed the "Draft Amendments to the Implementation Rules of the Patent
Law: Opinion/Feedback Soliciting
Version)” for soliciting opinions and feedback from the general public with a response period from November
27, 2020, to January 11, 2021.
According to the explanatory documents affixed to the
"Draft Amendments to the Implementation Rules of the Patent Law:
Opinion/Feedback Soliciting Version)" published on November 27, 2020,
the main contents of this amendment to the Implementation Rules include the following:
(1)
Patent Term Adjustment ("PTA")
The 4th amendment to the Patent Law
introduced for the first time a system for patent term extension ("PTA"). If an invention patent is
granted beyond four years from its filing date and also beyond three years from the date of filing a request for
substantive examination, the CNIPA shall, upon request by the patentee, compensate for any unreasonable delay in
granting the patent. However, if the delay is caused by the applicant, PTA shall not apply. The draft amendment to
the Implementing Rules of the Patent Law (hereinafter referred to as "the draft amendment of the
Rules")specifies the relevant provisions regarding "unreasonable delay caused by the
applicant."
(2)
Patent Term Extension ("PTE") for Pharmaceutical-related
Patents
The 4th amendment to the Patent Law
introduced for the first time a system for compensating the patent term for pharmaceutical-related patents. The
CNIPA may, upon request by the patentee, allow a request for PTE for new drug invention patents, for which drug
marketing permits are obtained in China. The term allowed for PTE shall not exceed five years, and the effective
patent term shall not exceed 14 years after the drug is marketed. The draft amendment of the Rules sets out the
relevant provisions regarding "conditions for requesting PTE for pharmaceutical-related patents, the scope of
applicable pharmaceuticals and the scope of protection."
(3)
Design Patent Practice
The 4th amendment to the Patent Law expanded
the scope of subject matters eligible for design patent protection and included "partial designs" as
patentable design subject matters. In order to align with the Hague Agreement, the term of a design patent has been
extended to 15 years. Domestic priority claim was introduced and is now applicable to design patent applications.
The draft amendment of the Rules sets out the relevant provisions regarding partial design, domestic priority claim
etc. for design patents.
(4)
Patent Open Licensing Practice
In order to promote the licensing and practice of
patents, the 4th amendment
to the Patent Law introduced a new system as to open licensing of patents. A patentee may voluntarily declare in
writing to the CNIPA its willingness to license its patent to any entity or individual, the patentee shall specify
the payment method and standards for licensing fees. The CNIPA will publish such declarations for implement the
patent open licensing. Any entity or individual wishing to practice a patent under open licensing shall notify the
patentee in writing and, after paying the licensing fee according to the announced payment method and standards,
obtain the licensing to practice the patent. The draft amendment of the Rules sets out provisions related to open
licensing, including the procedures and requirements for open licensing declarations, circumstances where open
licensing declarations are not published, procedures for withdrawing open licensing declarations, and recordation
procedures and supporting documents as needed after the open licensing arrangement is reached.
(5)
Administrative Enforcement Actions
The 4th amendment to the Patent Law
introduced a new system enabling the CNIPA to handle patent infringement disputes with significant national
impact." The draft amendment of the Rules sets out relevant provisions for the CNIPA to handle patent
infringement disputes with significant national impact.
(6)
Specific Topics Related to the 4th Amendment to the Patent
Law or Other Related Examination Practices
The draft amendment of the Rules sets out relevant
provisions, including those related to the Patent Cooperation Treaty (PCT), incorporation by reference and priority
claim restoration, upgrading design patent practice, definitions of "filing dates" and "effective
dates" for applications for international industrial design registrations under the Hague Agreement etc.
(7)
In response to emergencies or normal situations in the country (e.g.,
sudden events such as epidemics), the draft amendment of the Rules explicitly states that the deadlines set out in
the Implementation Rules may be extended by the CNIPA at its discretion.
(8)
In order to improve the quality and efficiency of patent examination,
the draft amendment of the Rules stipulates that reexamination and invalidation actions may be examined ex officio.
(9)
In order to take into account the legitimate rights and interests of
patentees as well as prevention of abuse of patent rights, the 4th amendment to the Patent Law added the
following provisions: "The application and exercise of patent rights shall follow the principle of good faith;
patent rights shall not be abused to harm public interests or the legitimate rights and interests of others. If the
abuse of patent rights excludes or restricts competition and constitutes a monopoly act, it shall be handled in
accordance with the Anti-Monopoly Law of the People's Republic of China." The draft amendment of the Rules sets
out relevant provisions for reviewing violations of the principle of good faith.
(10)
The draft amendment to the Implementation Rules of the Patent Law
explicitly states that in the reexamination procedure of a patent case, the CNIPA may review defects not pointed out
in the rejection decision, but the applicant applying for re-examination shall be given an opportunity to present
its opinion.
(11)
In order to implement the requirements of "streamlining
administration, delegating powers, and improving regulation and services," the draft amendment of the Rules
sets forth provisions related to patent evaluation reports, exceptions for mandatory representation, simplification
of divisional application procedures, and patent information services.
(12)
The draft amendment to the Rules includes provisions related to
optimizing the patent examination procedure, electronic filing methods, and improving and simplifying requirements
for application documents.
(13)
In response to the strengthened administrative remedy procedures
against patent infringement and patent pass off under the 4th amendment to the Patent Law, the draft
amendment of the Rules includes provisions as to improving and strengthening administrative remedy protection,
establishment of judicial confirmation as to patent dispute administrative mediation agreements.
Regarding the "Draft Amendments to the Implementation Rules of the Patent
Law：Opinion/Feedback Soliciting
Version" mentioned above, the CNIPA publicly solicited opinions from the general public during the time period
from November 2020 to January 2021. Based on understanding and adopting appropriate opinions, the CNIPA further
proposed the "Draft Amendment of the Implementation Rules of the Patent Law (for Review Purpose)" and
submitted it to relevant government agencies for review, including the review by the Ministry of Justice. According
to the practice for legislative amendments in China, after the Ministry of Justice completes the amendment of the
Implementation Rules, it will submit the amended version and explanatory documents for review and decision by the
State Council. According to the "Notice of the General Office of the State Council on Issuing the Legislative
Work Plan of the State Council for 2023" announced on May 31, 2023 (https://www.gov.cn/zhengce/content/202306/content_6884925.htm), the draft administrative regulations to be reviewed by the State Council in 2023 include
the draft amendment of the Implementation Rules of the Patent Law. On November 30, 2022, CNIPA held a press
conference (the details can be found at https://www.cnipa.gov.cn/col/col3103/index.html & http://finance.people.com.cn/BIG5/n1/2022/1201/c1004-32578608.html), where it was stated that the "Draft Amendment of the Implementation Rules of the
Patent Law (for Review Purpose)" has been submitted to relevantdepartments for review. Zhang Peng, the Director
of the Legislative Affairs Department of CNIPA, stated that they will accelerate the process of amending the
Implementation Rules of the Patent Law, complete the amendment as soon as possible, and better safeguard the
implementation of the Patent Law. The Director of the Legislative Affairs Department of the CNIPA stated that the
contents of this amendment to the Implementation Rules of the Patent Law mainly involve four aspects: (1) improving
the patent examination system to enhance the quality and efficiency of patent examination; (2) strengthening patent
protection to safeguard the patentees’ legitimate rights and interests; (3) implementing the requirements of
the "streamlining administration, delegating powers, and improving regulation and services" reform to
promote the transformation and utilization of patents; and (4) adding a chapter on applications for international
industrial designs to align with international treaties.
As of now, the authorities have not disclosed the expected completion time for the
amendment of the Implementation Rules of the Patent Law (hereinafter referred to as "the amended Rules"),
which has resulted in a lack of clear implementation criteria for some practices under Patent Law amendments. For
example, according to Article 42, Paragraph 2 of the amended Patent Law, if an invention patent is granted beyond
four years from its filing date and also beyond three years from the date of filing a request for substantive
examination due to reason(s) not attributable to the applicant, the CNIPA shall, upon the request by the patentee,
allow patent term adjustment (“PTA”) to compensate for the unreasonable delay in the patent grant process. However,
prior to the amended Rules is completed and takes effect (such as at the present time), for invention patents
granted and published on or after June 1, 2021, patentees can only file requests for PTA within three months from
the date of patent grant publication in accordance with the Interim Measures implemented by the CNIPA. The
patentee will subsequently pay the relevant fees pursuant to the fee payment notice issued by the CNIPA. The CNIPA
will review such PTA request after the implementation of the amended Rules. In addition, if the owner of a
pharmaceutical-related patent applies for patent term extension (“PTE”）according to Paragraph 2, Article 42 of the amended Patent Law, the patentee, at the
present time, may file an application for PTE within three months from the date of obtaining the drug marketing
permit pursuant to the concerned Interim Measure implemented by the CNIPA. The patentee will subsequently pay the relevant fees
pursuant to the fee payment notice issued by the CNIPA. The CNIPA will review such PTE request after the
implementation of the amended Rules.
As stated above, the completion and implementation of the amended Rules is necessary
for clear implementation of the most recent amendments to the Patent Law, and various sectors are continuously
monitoring the progress of the amendment of the Implementation Rules. The CNIPA is highly concerned about the clear
implementation of the amended Patent Law and is fully committed to handle the ongoing amendment of the Rules. To
ensure the clear implementation of the amended Patent Law, in addition to actively handling amendments to the
Implementation Rules, the CNIPA has also been simultaneously working on the amendment of the Patent Examination
Guidelines. On August 3, 2021, the CNIPA announced the draft amendment of the Patent Examination Guidelines (for
soliciting opinions) and, on August 3,
2021, it announced the draft amendment of the Patent Examination Guidelines (for soliciting opinions again) on
October 31, 2022 in order to solicit opinions from various sectors and ensure the fair and reasonable implementation
of the Patent Law.
The 4th amendment to the Patent Law introduces several new provisions,
whether in terms of patent application and acquisition of patent rights or in terms of exercise of patent rights.
Patent applicants should closely monitor the progress and content of the amendment of the Implementation Rules and
the amendment of the Patent Examination Guidelines, and promptly establish operational methods in accordance with
the amendments of Patent Law and its Implementation Rules as well as the amendment of the Patent Examination
Guidelines so as to fully and properly protect the rights interests of patent
applicants/patentees.