As we reported in our October 2020 Newsletter, the Fourth Amendment to Chinese Patent Law (the Amendment) will be effective from June 1, 2021. We had expected that the corresponding amendments to the Implementing Regulations of the Chinese Patent Law and the Patent Examination Guidelines would have been enacted before June 1, 2021. However, they have not as of late May, and we do not expect this to happen before June 1. Therefore, many practical details regarding how the Amendment will be implemented remain unclear.
On May 24, 2021, in anticipation of the effective date of the Amendment, the CNIPA did publish the above titled Temporary Rules to help implement some of the changes starting from June 1, 2021. We have paraphrased and highlighted in blue the Temporary Rules below, followed by our comments in black.
Rule 1. Starting from June 1, 2021, applications
covering partial designs will be accepted. The CNIPA will examine
such applications after the enactment of the amended Implementing
Regulations of the Chinese Patent Law.
Although there is no further official details regarding how or in
what format partial designs should be illustrated or presented in
the applications, we think that a combination of solid and broken
lines and/or other forms that clearly shows the parts to be
protected would be a reasonable form to do so. In this regard,
please contact us if you have any questions.
Rule 2. Starting from June 1, if an applicant believes
that a relevant disclosure made within 6 months of the application
date qualifies as "for public interest purposes during
national emergency or extraordinary situation," he may
petition, in paper form, for an exception to novelty-defeating
disclosures regarding the application. The CNIPA will examine such
petitions after the enactment of the amended Implementing
Regulations of the Chinese Patent Law.
We think that a typical example of the exception would be for
someone to publish a research paper regarding treatment or vaccine
for the corona virus before filing the relevant patent application.
Other situations may also qualify.
Rule 3. Starting from June 1, 2021, a design patent
application may claim priority to a first-filed Chinese design
patent application for the same subject matter within six (6)
months of the first filing. The CNIPA will examine such
applications and the basis for the priority claim after the
enactment of the amended Implementing Regulations of the Chinese
Patent Law.
Applicant can already do so in invention and utility model patent
applications.
Rule 4. Starting from June 1, 2021, for invention and
utility model applications, the deadline for submitting a copy of
the priority application, if priority is claimed, is 16 months from
the earliest priority application date.
Before June 1, 2021, this deadline is 3 months from the current
application date.
Rule 5. Starting from June 1, 2021, if a patent is
granted after four (4) years from application date and three (3)
years from the date of request for substantive examination, the
patentee may request, within 3 months of grant publication date,
for patent term extension on the basis of unreasonable delays
during prosecution of the patent, except for delays caused by the
applicant. The CNIPA will examine such requests after the enactment
of the amended Implementing Regulations of the Chinese Patent
Law.
Although there are no further official details, especially
regarding the definition of "delays caused by the
applicant," we suggest that patentees actively consider making
such request for potentially qualified patents.
Rule 6. Starting from June 1, 2021, in order to
compensate for time used for regulatory evaluation and approval of
a new drug in China, a patentee may request for patent term
extension for a patent relevant to the approved new drug. The
request should be made within 3 months of the regulatory approval
and may extend the patent term by up to five (5) years. However,
the total remaining term of the relevant patent may not exceed
fourteen (14) years after the new drug enters market. The CNIPA
will examine such requests after the enactment of the amended
Implementing Regulations of the Chinese Patent Law.
Although there are no further official details, especially
regarding the definition of "new drug" and the related
patent link system, we suggest that patentees actively consider
making such request for potentially qualified patents.
Rule 7. Starting from June 1, 2021, a patentee may
declare its intention, in paper form, to offer Open Patent License
of a patent to any interested party. The CNIPA will examine such
declarations after the enactment of the amended Implementing
Regulations of the Chinese Patent Law.
We think that the provisions will help to further commercialize
Chinese patents, but look forward to more details in this
regard.
Rule 8. Starting from June 1, 2021, a defendant in an
infringement action involving a utility model or design patent
before a court or administrative agency, may request, in paper
form, a Patentability Assessment Report on the patent from the
CNIPA.
Currently only the patentee and interested party can do so upon
request by court. We think that this will make the report more
important when enforcing utility model or design patents.
Rule 9. Starting from June 1, 2021, the CNIPA will
examine a patent application on the basis of (1) whether, in
exercising the application or patent right, the applicant/patentee
has followed the principle of honesty and credibility and whether
it has abused the right to harm public interest or other's
legitimate rights, and (2) whether the subject matter belong to the
prohibited methods of nuclear transformation or substances obtained
by a method of nuclear transformation.
We look forward to more details regarding how the CNIPA will
examine and enforce the principals mentioned in (1). Regarding (2),
before the Amendment, the prohibition only covers substances
obtained by a method of nuclear transformation.
Rule 10. The term of a design patent applied on or
before May 31, 2021 will be 10 years from application
date.
The terms for design patents applied on or after June 1, 2021 will
be 15 years.
Rule 11. These rules are effective from June 1, 2021.
As can be seen, although the Fourth Amendment will introduce a number of major changes to the Chinese Patent Law, many practical details regarding the implementation of these changes are still not very clear, despite the above discussed Temporary Rules. We look forward to the corresponding amendment to Implementing Regulations by the State Council and amendment to the Patent Examination Guidelines by the CNIPA, and will keep you informed.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.