Mediaboss Marketing

October 17, 2020, the 22nd Meeting of the Standing Committee of the Thirteenth National People's Congress adopted the decision on amending the Patent Law of the People's Republic of China (PRC). This is the fourth amendment of PRC Patent Law. The PRC Patent Law was first entered into force in 1985, and was amended three times in 1992, 2000 and 2008. The fourth amendment was drafted in 2015 and adopted after several years of discussion and many rounds of solicitation of different opinions. The amended Patent Law will come into effect on June 1, 2021. The substantive amendments include the following: I. Design patent regulations This amendment made the following changes to the design patent regulations: (1) Broadening the eligible subject matter of the design patent According to the current Patent Law, partial designs are not eligible subject matter of the design patent. In other words, the current Patent Law in China protects only the design of an overall product, and applicants are not allowed to claim a partial design of a product. Accordingly, in practice, it is not allowed to include broken lines in six-dimensional views and perspective view(s) of a design patent application (Note: It is allowable to include broken lines in the reference view(s)). In contrast, Article 2 of the amended Patent Law stipulates that, "a design means any new design of the shape, the pattern, or their combination, or the combination of the color with shape or pattern, of the whole or part of a product, which creates an aesthetic feeling and is fit for industrial application," which makes partial design become eligible subject matter of a design patent. After the new law comes into force, applicants may apply for design patent protection for partial innovative designs of the product. In practice, the applicant may show the unclaimed parts by broken lines (or other ways) and the claimed parts by solid lines in the drawings of a design patent application. (2) Extending the term of a design patent According to the current Patent Law, the protection period of a design patent is 10 years. Pursuant to Article 42 of the amended Patent Law, "the duration of the design patent right is 15 years." This amendment was made to keep pace with international standards and prepare for China's future participation in the Hague Agreement Concerning the International Deposit of Industrial Design. (3) Adding domestic priority right regulations Pursuant to Article 29 of the current Patent Law, applicants may claim both foreign priority and domestic priority rights for inventions and utility models according to the law, and may only claim foreign priority right for designs. This amendment introduced domestic priority right regulations for design patent applications. II. Addition of novelty grace period Pursuant to Article 24 of the current Patent Law, any invention-creation for which a patent is 2 applied shall not lose its novelty if, within six months before the filing date of the application, one of the following events has occurred: (1) it was exhibited for the first time at an international exhibition sponsored or recognized by the Chinese Government; (2) it was made public for the first time at a prescribed academic or technical conference; or (3) it was disclosed by any person without the consent of the applicant. Regarding state-of-the-art technology put to use in response to emergencies, to allow such technology to be patentable subject matter, the amended Patent Law stipulates that: any invention-creation which is first disclosed for the purpose of the public interest when a national emergency or extraordinary state of affairs occurs shall not lose its novelty within six months before the date of filing. III. Addition of unpatentable subject matter According to Article 25 of the amended Patent Law, nuclear transformation methods are subject matter that cannot be granted a patent right. IV. Extension of time for submitting copies of priority documents for inventions and utility models According to Article 30 of the current Patent Law, an applicant who requests a right of priority shall submit copies of priority documents within three months. Article 30 of the amended Patent Law is as follows: (1) Any applicant who requests the right of priority of a patent for invention and utility model shall submit a written declaration at the time of application, and submit, within sixteen months, a copy of the patent application documents filed for the first time. (2) Any applicant who requests the right of priority for a patent for design shall submit a written declaration at the time of application, and submit, within three months, a copy of the patent application documents filed for the first time. According to the above amendments, the time for submitting a copy of the priority document for inventions and utility models is extended from three months to sixteen months, and for designs, the time remains unchanged, i.e., three months. V. Encouraging entities to dispose of their rights for service inventions and motivated inventors According to Article 6 of the amended Patent Law, an entity may dispose of its right to apply for a patent of a service invention-creation and the patent right thereof in accordance with the law, to promote the exploitation and utilization of the invention-creation concerned. The foregoing regulations can ensure that entities have the right to dispose of its right for service inventions. In addition, in accordance with Article 15 of the amended Patent Law, the state encourages entities that have been granted patent rights to implement property right incentives by using equity, share options, dividends, etc., so that inventors or designers can share the benefits of innovation in a reasonable way. The foregoing regulations clearly encourage entities to use equity, share options, and dividends to motivate inventors to be more innovative. VI. Introduction of regulations on extension of the duration of patent protection Duration of patent protection (for example: The duration of a patent right for an invention is 3 20 years) is counted from the date of filing. In the current patent examination practice, some inventions are granted patent rights several years (or even more than 10 years) after the filling date. This excessively long examination period will undoubtedly shorten the protection term of patent rights. This amendment introduced regulations on extension of the patent protection term for the first time. According to Article 42.2 in the amended Patent Law: "where the patent right for an invention was granted after four years from the date of its application and after three years from the date of substantive examination of the application, the patent administration department under the State Council shall, at the request of the patentee, grant a compensation period for the duration of a patent right with regard to the unreasonable delay during the granting process of the invention patent, except where the unreasonable delay was caused by the applicant. VII. Introduction of a compensation mechanism for duration of drug patent right Drug patents usually involve very high research and development costs, so all drug patentees wish to obtain more effective and longer-term protection for drug patents. However, due to the particularity of drug-related inventions, drugs need to be approved by the relevant authorities before going on the market, which delays the time to market for patented drugs. For this reason, this amendment introduced regulations on compensation for the duration of a drug patent right, to better protect drug-related patents. According to Article 42.2 in the amended Patent Law: "in order to compensate for the time occupied by the review and approval of new drugs before they go on sale, the patent administration department under the State Council shall, at the request of the patentee, grant a compensation period for the duration of patents of new drug inventions that have been approved for marketing in China. The compensation period shall not exceed five years, and the total effective duration of the patent right after the new drug goes public shall not exceed 14 years." VIII. Introduction of regulations on open licensing and annual fee reduction for patents In order to promote licensing and exploitation of patents, this amendment introduced open licensing regulations. The amended Patent Law is as follows: (1) Where a patentee voluntarily declares in writing to the patent administration department under the State Council that he/she is willing to license any entity or individual to exploit their patent, and specifies the payment method and standard for license fees, the patent administration department under the State Council shall make an announcement and implement open licensing. Where an open licensing statement is filed for a utility model or design patent, a patent right evaluation report shall be provided. Any patentee who withdraws his/her open license statement shall make a written request and the patent administration department under the State Council shall make an announcement. Where the open licensing statement is announced and withdrawn, the validity of the open licenses granted earlier will not be affected. (Article 50). (2) Any entity or individual who is willing to exploit an open-licensed patent shall notify the patentee in writing, and obtain a patent exploitation license after paying the license fee in accordance with the payment method and standard as indicated in the announcement. During implementation of open license, the annual patent fee paid by the patentee shall be reduced or exempted accordingly. Patentees who implement open license may grant an ordinary license after negotiating with the licensee on the license fee, but shall not grant an exclusive or sole license for the patent. (Article 51). (3) If any dispute arises from the exploitation of open license between the parties, it shall be 4 settled by the parties through consultation; if they are unwilling or fail to reach an agreement through consultation, they may request the patent administration department under the State Council for mediation or may directly file a suit in the people's court. (Article 52). IX. Introduction of a regulation that allows the alleged infringer to voluntarily submit a patent evaluation report Since utility model and design applications are not subject to substantive examination, in the process of enforcement after these patents are granted, courts or local intellectual property offices generally require patentees to submit a patent right evaluation report to prove the stability of their patent rights. According to the current Patent Law and patent examination guidelines, courts or local intellectual property offices may require the patentee or interested party (i.e., exclusive licensees) to submit a patent rights evaluation report issued by the State Intellectual Property Office of China. According to Article 66 of the amended Patent Law: "the patentee, interested party or alleged infringer may also submit a patent right evaluation report." This amendment includes the "alleged infringer" as a subject who can request the State Intellectual Property Office of China to issue a patent right evaluation report. This makes the regulation for the patent right evaluation report more complete and neutral in terms of procedures, and also provides a new way for the alleged infringer to confront the patentee. X. Introduction of principle of good faith This amendment of the Patent Law not only strengthens the protection of the legitimate rights and interests of the patentee, but also provides regulations so as to prevent the abuse of the patent right by the right holders. According to Article 20 of the amended Patent Law, "the principle of good faith shall be followed in applying for and enforcing the patent right, and the patent right shall not be abused to damage the public interest or the legitimate rights and interests of others. Those who abuse the patent right to exclude or restrict competition and therefore constitute monopolistic behavior shall be dealt with according to the Anti-monopoly Law of the People's Republic of China." XI. Perfection of administrative protective mechanism against patent infringement Patent protection in China has been implemented through a two-track system, which means that a patentee may file a lawsuit with the people's court or apply for handling by the patent administration department in the case of patent infringement disputes. This amendment has improved the administrative protective mechanism against patent infringement, and the key points are as follows: (1) According to the current Patent Law, only a local intellectual property office may handle patent infringement disputes. In order to further improve the patent administrative protection, Article 70.1 of the amended Patent Law stipulates that "the administrative department for a patent under the State Council (i.e., the China National Intellectual Property Administration "CNIPA"; formerly known as the State Intellectual Property Office, "SIPO", of the P.R.C.) may, at the request of the patentee or interested party, handle patent infringement disputes that are of nationwide significance.

Read more:
China adopted the fourth amendment of the Patent Law - Lexology