Foreign filing license
According to Article 20.1 of the Patent Law, for an invention completed in China, if the applicant wants to file a patent application abroad, he shall submit the invention to SIPO for confidentiality examination (CE) beforehand. Failure to comply with this requirement will result in loss of patent rights in China.
Rule 8 of the new Regulations provides that ¡°an invention completed in China¡± refers to an invention whose substantial contents are completed in China. Although this definition is somewhat general, the understanding is that, if an inventor located in China makes inventive contributions to an invention, that invention is subject to CE.
Rule 9 of the new Regulations details the procedure of CE. In accordance with this rule, SIPO should promptly notify the applicant that he is allowed to file patent applications in foreign countries or has to wait for further examination. In the latter case, SIPO should make its final decision in time.
If the applicant fails to receive a notification within four months after filing the CE request, he can proceed to file patent applications in foreign countries. If the applicant receives a notification indicating the necessity of further examination within the four month term, he has to wait for a final decision. If the applicant fails to receive a final decision within six months after filing the CE request, he can proceed to file patent applications in foreign countries.
In practice, for most cases, SIPO can issue notifications allowing foreign filings within two weeks after receiving CE requests. Although two weeks are not too long, it would be recommendable to file CE requests as soon as possible, for example, simultaneously with filing Chinese patent applications.
Inventions relying on genetic resources
Article 26.5 of the Patent Law requires that, if the completion of a patent application depends on generic resources, the applicant shall indicate the direct source and the original source of said genetic resources in the patent application documents.
Rule 109 of the new Regulations further provides that, for PCT applications relying on genetic resources, the applicant should indicate the direct source and the original source of said genetic resources when entering the national phase in China.
Rule 26 of the new Regulations defines ¡°generic resources¡± in this context as materials taken from human beings, animals, plants or microorganisms, containing inheritable units, and having practical or potential value. In addition, this rule specifies that generic resources dependent applications refers to those that utilize the inheritability of the generic resources.
Violation of Article 26.5 will lead to rejection of the patent application, under Rule 53 of the new Regulations. However, once granted, the patent cannot be invalidated on the ground of Article 26.5, according to Rule 65 of the new Regulations.
Brief description of design application
Pursuant to Article 27.1 of the Patent Law, when filing a design patent application, the applicant has to submit a brief description of the design. If the applicant fails to do so, the application will not be accepted.
Rule 28 of the new Regulations further provides that the brief description shall include: name of the product, use of the product, main features of the design, and designation of a drawing which best characterizes the main features of the design.
Multiple design application
Under Article 31.2 of the Patent Law, an applicant may file multiple similar designs applied to the same product in one application.
Rule 28 of the new Regulations requires that, when filing a multiple design application, the applicant should indicate which is the basic design in the brief description. Rule 35 of the new Regulations further provides that other designs should be similar to the basic design. Besides, Rule 35 sets a maximum of 10 on the number of designs that can be filed in one application.
Double patenting
According to Article 9.1 of the Patent Law, if an applicant wants to pursue both a utility model patent and an invention patent for the same innovation, he has to file the two applications on the same day.
Rule 41 of the new Regulations further requires that, when doing so, the fact that another application is also simultaneously filed should be indicated in each of the two applications. In addition, under this rule, when the invention application is examined, the examiner will invite the applicant to choose whether to abandon the utility model patent or not. If not, the invention application will be rejected. If yes, the invention application will be granted and the utility model patent will be terminated on the day when the grant of the invention patent is announced.
Patentability assessment report
In accordance with Article 61.2 of the Patent Law, a patentee or an interested party of a utility model patent or a design patent may request SIPO to issue a patentability assessment report in order to enforce his patent.
Rule 57 of the new Regulations requires that SIPO should issue the report within two months after receiving the request. Furthermore, this rule provides that, when more than one requests are received, SIPO issues only one report, which can be referred to or copied by any person.
Withdrawal of invalidation request
Under Rule 71 of the old Regulations, during an invalidation procedure, the petitioner may withdraw his invalidation request before the Patent Re-examination Board (PRB) makes the final decision. And, if the petitioner does so, the PRB should terminate the invalidation procedure.
According to Rule 72 of the new Regulations, however, after the petitioner¡¯s withdrawal of the invalidation request, the PRB should not terminate the invalidation procedure if the patent can be invalidated wholly or partly based on its findings thus far.
Compulsory license
Article 48 provides that, where the patentee has not exploited the patent or has not sufficiently exploited the patent without any justified reasons after the expiration of three years from the date of granting the patent and the expiration of four years from the filing date, a third party capable of exploiting the patent may request SIPO to issue a compulsory license.
Rule 73 of the new Regulations defines ¡°not sufficiently exploited¡± as not satisfying the requirements of the domestic market.
Under Article 50 of the Patent Law, for the purpose of public health, SIPO may issue a compulsory license to manufacture a drug patented in China and to export it to the countries or regions specified in related international treaties to which China is a party.
Rule 73 expands the scope of the compulsory license under Article 50 of the Patent Law to cover patented active ingredients necessary to manufacture the drug and patented diagnostic tools necessary for the use of the drug.
Reward and remuneration of inventors
Rule 76 of the new Regulations provides that a company may enter into a contract with inventors for the reward and remuneration.
If there is no such a contract and there exist no company¡¯s rules to that effect, the company should pay, as reward, not less than RMB 3000 for an invention patent, or not less than RMB 1000 for a utility model patent or a design patent within three months after the date of granting the patent, under Rule 77 of the new Regulations.
As prescribed in Rule 78 of the new Regulations, if there is no such a contract and there exist no company¡¯s rules to that effect, the company should pay not less than 2% of the operating profit earned through exploiting an invention patent or a utility model patent, or not less than 0.2%, a design patent. If the patent is licensed to third parties, the company should pay not less than 10% of the royalties to the inventors.
Note that Rules 76-78 are binding not only on state-owned companies but also on private companies. Therefore, it is recommendable that companies should conclude a contract with inventors as mentioned in Rule 76, or formulate rules about reward and remuneration of inventors.
Patent counterfeiting
According to Rule 84 of the new Regulations, any of the following should be regarded as patent counterfeiting:
-affixing patent marking to a product, or the package thereof, which involves no patent, or involves invalidated or terminated patent; labeling a product, or the package thereof, with a patent number of others without authorization; selling of the resulting product;
-referring to, in the specification of a product or the like, unpatented technology as patented technology, or patent application as patent; using a patent number of others without authorization;
-counterfeiting or transforming patent certificate, patent document or patent application document.
Rule 84 further provides that, after termination of a patent, selling the product bearing the patent marking affixed when the patent was still valid does not constitute patent counterfeiting.
In addition, under this rule, if the seller of a product does not know the product was counterfeited and can prove the product was obtained from legitimate source, no fine should be imposed.
Deadline for paying filing fee
Rule 92 of the old Regulations requires the applicant to pay the filing fee within two months from the filing date.
According to Rule 95 of the new Regulations, the filing fee can be paid within two months from the filing date or within 15 days from receipt of the filing receipt, whichever expires later.
Maintenance fee for invention patent applications
Under Rule 94 of the old Regulations, the applicant of an invention patent application should pay a maintenance fee during the pendency of the application after two years from the filing date.
This rule is deleted in the new Regulations. That is, maintenance fees for invention patent applications are no longer payable.
Deadline for filing Chinese translations of PCT Article 19 or Article 34 amendments
Rule 104 of the old Regulations sets an somewhat ambiguous deadline for filing Chinese translations of PCT Article 19 or PCT Article 34 amendments: before completion of the technical preparations for national publication of the PCT application by SIPO.
Rule 106 of the new Regulations makes this deadline clearer: within two months after the date of entering the national phase in China.
Deadline for filing voluntary amendments after a PCT entering national phase as utility model patent application
Rule 109 of the old Regulations provides that, for a PCT application entering into the national phase in China as a utility model patent application, the applicant may file voluntary amendments within one month from the date of entering the national phase.
Rule 112 of the new Regulations extends this deadline to two months from the date of entering the national phase.
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