Main Points of Proposed Amendment (4th) to Chinese Patent Law
Release time:2020-07-14
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China's National People's Congress (NPC) has recently published an updated Draft of Proposed Amendment to Chinese Patent Law. This will be the Fourth (4th) amendment to the patent law and has been discussed for a number of years. The NPC is currently seeking public comments on the Draft.
There are a number of important proposed changes to the law. We have paraphrased and highlighted in blue the key changes below, followed by our comments in black.
Article 2.4 Partial designs will be allowed.
A much welcomed change. It will provide flexibility to the applicants and convenience to applicants from countries that allow partial designs.
A much welcomed change. It will provide flexibility to the applicants and convenience to applicants from countries that allow partial designs.
Article 6.1 An employer of service-inventions may dispose its rights to applications or patents according to law.
This is a clarification rather than substantive amendment.
This is a clarification rather than substantive amendment.
Article 15.2 For service-inventions, the state encourages employers to implement ownership incentives and adopt means such as equities, options, and profit sharing, etc., to allow the inventors to reasonably share the benefits of innovation.
Although the provision is only an "encouragement", rather than a requirement, we do not think that it is necessary or proper. We think that the employers should be left freely, within the boundary of law, to decide on how to reward and remunerate the inventors.
Although the provision is only an "encouragement", rather than a requirement, we do not think that it is necessary or proper. We think that the employers should be left freely, within the boundary of law, to decide on how to reward and remunerate the inventors.
Article 20.1 In exercising the application or patent right, one should follow the principle of honesty and credibility, but shall not abuse the right to harm public interest or other's legitimate rights.
We generally do not have objections to the provision, but look forward to further interpretation and details.
We generally do not have objections to the provision, but look forward to further interpretation and details.
Article 20.2 Abusing patent right, excluding or restricting competition, if constituting monopolistic conduct, shall be treated according to Anti-Monopoly Law of China.
We generally do not have objections to the provision, but look forward to further interpretation and details.
We generally do not have objections to the provision, but look forward to further interpretation and details.
Article 24.1 (1) Newly added exception to novelty-defeating disclosures: Disclosures made within 6 months of application date and for public interest purposes during national emergency or extraordinary situation.
We generally do not have objections to the provision, but look forward to further interpretation and details.
Article 29 Applicant may claim priority to its own first-filed Chinese design patent application within six (6) months of the first filing and for the same subject matter.
We do not have objections to the provision.
We do not have objections to the provision.
Article 42.1 Design patent term will be extended to fifteen (15) years, from the current ten (10) years.
It is generally believed that this provision will help clear the way for China to join the Hague Agreement, which other major countries have all joined.
It is generally believed that this provision will help clear the way for China to join the Hague Agreement, which other major countries have all joined.
42.2 For patents granted after four (4) years since application date and three (3) years since request for substantive examination, applicant may request for patent term extension on the basis of unreasonable delays during prosecution of the patent, except for delays caused by the applicant.
We do not have objections to this provision and are eager to learn further details.
We do not have objections to this provision and are eager to learn further details.
42.3 In order to compensate for time used for new drug evaluation and approval, the term of a relevant patent for an approved new drug in China may be extended by up to five (5) years upon request by patentee. However, after the new drug enters market, the total remaining term of the relevant patent may not exceed fourteen (14) years.
We do not have objections to this provision and are eager to learn further details.
We do not have objections to this provision and are eager to learn further details.
Article 48 The CNIPA and provincial patent administrative authorities should work jointly, at comparable administrative levels, in taking measures to enhance patent public services and promote implementation and utilization of patents.
We do not have objections to this provision.
We do not have objections to this provision.
Articles 50 – 52 Provisions regarding Open Patent Licenses, setting out mechanisms and procedures whereby patent owners can publish, through the CNIPA, their intentions to license their patents to any interested party.
We do not have objections to the provisions.
We do not have objections to the provisions.
Article 66.2 In an infringement action involving a utility model or design patent before court or administrative agency, the accused infringer can also submit the Patentability Assessment Report. Currently only the patentee and interested party can do so.
We do not have objections to the provision.
We do not have objections to the provision.
Article 70.1 CNIPA, at the request of patentee or interested party, may handle patent infringement disputes that have significant impact nationwide.
We think this is an inappropriate enlargement of the CNIPA's authority and jurisdiction.
Article 70.2 Patent administrative authority of a local government, at the request of patentee or interested party to handle patent infringement disputes, may combine cases involving the same patent within its jurisdiction. The authority may also request a higher level government authority to handle cases involving the same patent across different jurisdictions.
We do not have objections to the provision.
We do not have objections to the provision.
Article 71.1 In case of willful infringing act, if the circumstances are severe, the court may set the amount of damages to be one (1) to five (5) times of the determined amount.
We do not have objections to the provision.
We do not have objections to the provision.
Article 71.2 Statutory damage amount will be under RMB 5 million (about US$715,000). Currently the amount is under RMB 1 million.
We do not have objections to the provision.
We do not have objections to the provision.
Article 71.4 In order to determine the amount of damages, if the plaintiff has done everything within its ability and the relevant account books and materials are mainly under the infringer's control, the court may order the infringer to provide such account books and materials. If the infringer does not provide or provide false account books or materials, the court may determine the damage amount by considering the plaintiff's request and evidence.
We do not have objections to the provision.
We do not have objections to the provision.
Article 74.1 Statute of limitation for filing infringement lawsuit is three (3) years (currently two years) from when patentee knew or should have known the infringement action and the infringer.
We do not have objections to the provision.
Article 75.2 A patentee or interested party can commence legal proceeding before court or CNIPA against a party seeking market approval for a drug which the patentee or interested party believes falls within the scope of a patent recorded in the Marketed Drug Patent Information Record Platform of China. The legal proceeding should be commenced within 30 days of the Drug Regulatory Authority's publication of the drug application. If no such proceeding is initiated within 30 days, the party seeking drug approval can commence legal proceeding with court or CNIPA to declare that the drug does not infringe the recorded patent.
We generally do not have objections to the provision. But there are many details that will need to be clarified.
We generally do not have objections to the provision. But there are many details that will need to be clarified.
Article 75.3 If the court or CNIPA makes an effective judgment/decision within nine (9) months, the Drug Regulatory Authority can decide, based on the judgment/decision, whether or not to approve marketing of a chemical drug that has passed technical reviews. If a party is not satisfied with the decision by the CNIPA, it can appeal the decision to the court within 15 days.
We generally do not have objections to the provision. But there are many details that will need to be clarified.
Article 75.4 The Drug Regulatory Authority and the CNIPA will formulate specific linkage methods regarding drug marketing approval and patent dispute resolution during the approval period.
We do not have objections to the provision.
We do not have objections to the provision.
If you have any questions, please contact us at sinda@chinasinda.com.
