The amendment of the detailed rules for the implementation of the patent law was adopted at the 95th Standing Meeting of the State Council on December 30th, 2009 in Mainland China. On January 9th, 2010, Decree No.569 of the State Council was signed by Premier of the State Council Wen Jiabao, and the Decisions of the State Council on Amending the Detailed Rules for the Implementation of the Patent Law of the People’s Republic of China was promulgated, which was put into effect on February 1st, 2010. On January 21st, 2010, Director of the State Intellectual Property Bureau Tian Lipu signed Decree No.55 of the Intellectual Property Bureau, and the new Guidelines for Patent Examination was promulgated, which was also put into effect on February 1st, 2010. Herewith the summary of the key emphases sort out:
Ⅰ. Detailed Rules for Implementation
The new patent law, whose amendment was deliberated and adopted at the 6th Meeting of the Standing Committee of the 11th National People’s Congress on December 27th, 2008 in mainland China, was put into effect on October 1st, 2009; in order to match with the new amendment of the patent law, the detailed rules for implementation are also amended. The two issuances are combined and explained together as follows:
1. To file an application for a patent in a foreign country, a confidentiality review is required:
The new patent law stipulates that where an application is filed in a foreign country for a patent for invention-creation made in China, the applicant shall first get an approval from the administrative department for patent under the State Council by undertaking a confidentiality review. For the fulfillment of this provision, the detailed rules for implementation stipulate that: to correctly define the scope of inventions that need confidentiality reviews, "an invention or a utility model made in China” as mentioned in the patent law is defined as “an invention or a utility model whose substantial content(s) of the technical solution is/are made within the territory of China”; and specific provisions are stipulated in terms of the procedure of filing a confidentiality review.
2. New provisions for application, examination procedure and criteria for patent examination and approval:
Considering that the relevant provisions of application, examination procedure and criteria for patent examination and approval have been amended in the new patent law, corresponding supplements to the detailed rules for implementation have also to be made, mainly including:
(i) The brief descriptions of the patent application and designs shall indicate the following particulars: “Brief Description” is deemed as an essential document for design application by the new patent law, and since it can be used to explain the protection scope of the design, the detailed rules for implementation have included specific provisions for the content of brief description. In the past patent trial practices, it was difficult to define the protection scopes of patent rights for designs resulting from the inexplicitness in the expression of the contents in the application documents; in future trials, the “Brief Description” will become an important reference for the determination of the protection scopes of patent rights for designs.
(ii) Two applications in one case: where for one invention, an applicant files patent applications for both utility model and invention on the same day, special statements must be included in each of the two applications stating that another type of the patent application has been filed, and according to the principle that one invention can only be granted one patent right, in the event that applications for both invention and utility model are being filed, the applicant has to surrender the patent right for utility model, if already obtained, to be granted the patent right for the invention.
(iii) An interrelated application of design is permitted: an applicant may file a single application for several similar designs of a same product, which means the application of the patent right for design could be filed as an interrelated application. The detailed rules for implementation stipulate that the applicant has to designate one basic design, and in one application the number of similar designs shall not exceed 10. In fact, before the amendment of the patent law, interrelated applications for designs existed in trial practices, but no expressed provisions could be referred to and differences from the relevant regulations in other countries were also found.
3. Where an invention is made on the basis of genetic resources, the source of the genetic resources shall be specified in the patent application:
In conformity with the provision stipulated in the new patent law that where an invention is made on the basis of genetic resources, the source of the genetic resources shall be specified in the patent application, the detailed rules for implementation have clearly defined that according to the Convention on Biological Diversity, “genetic resource” refers to any material(s) extracted from humans, animals, plants, or microbes, etc. that contain(s) functional units of heredity as well as practical or potential values. Moreover, taking into consideration the circumstance where although biological resources are utilized in certain inventions, their hereditary functions are not employed, an applicant is not obliged to disclose his source information about the genetic resources. The detailed rules for implementation define “inventions that are made on the basis of genetic resources” as: inventions that are made by utilizing the hereditary functions of the genetic resources. The detailed rules for implementation have also stipulated the method of disclosing the source information of the genetic resources, wherein the applicant must specify in his patent application how the invention is made on the basis of the genetic resources.
4. Evaluation report of patent right:
The scope of the search report system for utility model patents is enlarged in the new patent law to include designs; the scope of the applicants is enlarged to include interested parties. The name of the report has been changed to “Evaluation Report of Patent Right”. That is to say according to the new patent law, the evaluation report of patent right could be applied by both models and designs, and both the patentee(s) or the interested parties may request the administrative department for patent under the State Council to provide the evaluation report of patent right as evidence in trials and dispose of patent infringement disputes. Specific provisions in this regard are stipulated in the detailed rules for implementation that to apply for an evaluation report of patent right, an applicant shall submit a written request for the evaluation report of patent right, in which the patent number is clearly stated; and the evaluation report of patent right shall be prepared by the administrative department for patent under the State Council within 2 months upon its receipt of the written request.
To prevent any potential conflicts, for one patent right, the administrative department for patent under the State Council shall prepare only one evaluation report; the evaluation report may be accessed by the public for reference and duplication. What calls for particular attention is: the evaluation report of patent right is only a source of reference which is used by the People’s Court to decide whether case proceedings should be suspended or not in trials of civil cases involving patent infringements for utility models and designs, but not the basis on which a case is opened. In the event that the patentee or interested parties are unable to provide the evaluation report, the court shall still grant permission to open a case. In the trial of administrative disputes involving patent invalidation, the People’s Court shall judge the validity of patent rights independently according to facts and the laws; while the evaluation report of patent right has no legal effect in determining the validity or invalidity of the patent right; to ensure the authority of the evaluation report of patent right and public interests, only one evaluation report of patent right should be prepared by the administrative department for patent under the State Council, and shall be accessed by the public for the purpose of reference and duplication.
5. System of compulsory license for exploitation of patent:
According to the Agreement on Trade-related Intellectual Property Rights and relevant documents issued by the World Trade Organization, the new patent law has increased the types of compulsory license, and clearly stipulated the scope of application of the compulsory license. The detailed rules for implementation define the essentials of compulsory license “non-fully-implemented patent" as "the method or scale of the patent implementation adopted by the patentee or licensed parties fails to meet the domestic requirements for patented products or methods". Secondly, to encourage more contribution from compulsory license in addressing public health risks, the detailed rules for implementation define patented drugs as “for the purpose of addressing public health problems, any patented products in pharmaceutical industries or products directly obtained through patented process, including the active ingredients required for the manufacture of such product when the patent rights are acquired, and the diagnostic tools required for using such product”. While in terms of procedure, the detailed rules for implementation has also stipulated that when the administrative department for patent under the State Council decides to grant approval to compulsory license according to the provisions stipulated in Article 50 of the new patent law, relevant provisions in international treaties concluded with or participated by China concerning that the compulsory license is granted approval only for purpose of addressing public health problems shall also be conformed with at the same time.
6. Passing off the patent and its legal liability:
The action of counterfeiting the patent of another is concluded in the new patent law as "Passing off the Patent" together with the action of passing any unpatented product or method off as a patented product or method. Meanwhile, relevant administrative punishments have also been stipulated. In this regard, the detailed rules for implementation stipulate that: passing off the patent is deemed conducted in any event where patent marking is used on unpatented products or their packages; patent marking is used without permission; such documents as patent certificates are forged or altered to cause public confusions where technologies or designs that are not granted patent right(s) are wrongly taken for those granted with patent rights. In addition, the detailed rules for implementation also stipulate that: a person who sells counterfeit patented products with no knowledge about the products being counterfeited, and can prove that the products were obtained from a legitimate source, shall be ordered by the administrative department for patent to stop the sale, but exempted from penalty.
7. New provisions that will contribute to patent development:
(i) Relevant fees have been reduced: the detailed rules for implementation have canceled the fee for requesting suspension of procedures, fee for requesting compulsory license, fee for requesting a ruling on exploitation fee for a compulsory license and fee for maintaining application.
(ii) Restrictions on the right of priority entitled to parties concerned have been relaxed: the detailed rules for implementation have stipulated that where one or two items among such contents as the date of the earlier application, application number or name of the original accepting institution is wrongly filled or left out in the written request, but corrected or refilled by the applicant within a specified time limit, his right of priority entitled is not affected; the detailed rules for implementation have also stipulated that where the right of foreign priority is claimed by an applicant of patent for design, and the brief description for design was not included in his earlier application, his right of priority entitled is not affected as long as the brief description for design is submitted by the applicant in the later application and in accordance with statutory requirements.
(iii) Incentives and remuneration system for On-duty invention have been improved: to leave units/On-duty inventor granted with a patent more flexibility for their agreement on the amount of relevant incentives/remuneration out of the On-duty invention, the detailed rules for implementation have stipulated that: the unit granted with a patent right may form an agreement with the inventor, or write into the rules and regulations established by itself or himself according to law the method and amount of incentives and remuneration according to Article 16 of the patent law. Moreover, to further encourage innovations, the detailed rules for implementation have stipulated that where the parties concerned have not reached an agreement on the incentives or remuneration for On-duty invention through the way described above, statutory incentives or remuneration may be applied, and the scope of applying the statutory standards has also been enlarged from state-owned enterprises and public institutions to include all enterprises and institutions; the detailed rules for implementation have also increased the amount of statutory incentives for On-duty inventors.
8. Procedure of patent invalidation:
The detailed rules for the implementation of the old patent law stipulated that any person who requests for the invalidation of a patent for design on the ground that the patent right for design is in conflict with the prior legitimate right of another person, has to submit the punishment decisions or effective judgments that proves the existence of a conflict of rights. Otherwise, the Patent Re-examination Board will not accept the request. While according to the new detailed rules for implementation, the Patent Re-examination Board will not accept the request if any evidence that proves the existence of a conflict of rights is not submitted. On the court’s part, credits are given to the new provisions. However, to ensure the exercise of the claimant’s right, standards for the definition of evidence that proves the existence of a conflict of rights shall not be set too high.
9. Improvement of the proceeding system for intellectual property rights:
To go with the new amendment of the patent law, the courts are investing efforts to a better job in administrative proceedings of patent disputes, a more optimized allocation of judicial resources, and more unified law enforcement methods. On June 22nd, 2009, the Provisions on the Division of Work in the Trial of Administrative Intellectual Property Cases Involving Patent, Trademark and Other Authorization and Ownership Determination Issues was promulgated by the Supreme People's Court. From July 1st, 2009 on, any administrative case of intellectual property rights involving patent, trademark registration and determination of the content of rights shall remain with the intellectual property divisions of the intermediate people’s court and the Higher People’s Court of Beijing.
In addition, the Higher People’s Court of Beijing will be committed to improve relevant proceeding system, and provide proper solutions to technical problems arising in the proceedings of patent disputes. With regard to the characteristic that cases involving intellectual property rights are highly professional, proceeding systems including judicial authentication, expert witness, and technical investigation shall be established and improved, and eligible courts shall develop effective means and concrete measures during the proceedings of technical cases such as patent disputes to gradually establish a “database of expert consultants for intellectual property rights”. For instance, the First Intermediate People’s Court of Beijing adopts the system that invites technical experts to function as people’s assessors; the Second Intermediate People’s Court of Beijing has established a judgment model that consists of a “technical panel composed of three people” and a “collegial panel composed of five people”, and a mechanism where “technical problems and non-technical problems are addressed separately”; “suggestions are made after two rounds of collegial panel discussions" and “ruling documents are produced through two rounds of examinations, amendments, endorsements and approvals” is adopted.
Ⅱ. Guidelines for Examination
The main purpose of this amendment of guidelines for patent examination is to match with the third amendment of patent law and its detailed rules for implementation. In terms of improvement of trial procedures, optimization of the efficiency of patent examination and approval as well as regularization of patent examination and approval, some standards for patent application and examination have been amended. The new guidelines for examination are synchronized with the detailed rules for the implementation of the patent law, which have been put into effect on February 1st, 2010.
The new guidelines for examination are divided into 5 sections: the first section stipulates the preliminary examination; the second section stipulates the substantial examination; the third section stipulates the examination of international applications that have entered the National Phase; the fourth section stipulates the examinations of requests for re-examination and invalidation; the fifth section stipulates the patent application and transactional processing, wherein, sections one, two and four are arranged according to the sequence of the examination and approval procedures of patent application; section three stipulates the specifications for the examination of international applications that have entered the National Phase; section five contains general regulations that are applicable to all procedures.
1. Preliminary examination:
Preliminary examination is equivalent to a formal examination, which examines whether the application documents, deadlines and fees submitted are in accordance with relevant provisions in the patent law and its detailed rules for implementation, and if not, whether to allow rectifications, or reject right away.
The preliminary examination shall observe the following principles: (1) principle of confidentiality; (2) principle of written examination; (3) principle of hearing; and (4) principle of procedure simplification (that is enhancement of the examination efficiency, shortening of the examination procedure, correction of obvious mistakes by examiners and completion of the procedures after one time of rectification).
The relevant specific procedures in terms of the requirement for stating the source of genetic resources on the basis of which an invention is made, confidentiality review and two applications in one case are all stipulated in detail here.
2. Substantial examination:
Article 2 of the patent law stipulates the subject matters that are eligible for patent rights granting; Article 5 stipulates the restrictions of protection scope of patent right, in which inventions that are in violation of laws, public order and moral or made on the basis of genetic resources shall not be granted patent rights; Article 25 stipulates the subject matters that are not eligible for patent rights granting. The abovementioned are the essential subject matters in the substantial examination.
The examination principles adopted in the substantial examination are: (1) principle of request (the substantial examination is performed only upon the applicant’s request); (2) principle of hearing (the applicant shall be given at least one opportunity to give a statement of opinion or make corrections in terms of facts, reasons and evidence before being rejected); and (3) principle of procedure simplification. What calls for attention is: the principle of procedure simplification shall not be observed at the expense of violating relevant provisions in the principle of request and principle of hearing.
Due to the wide scope of the substantial examination, extremely-detailed provisions of substantial examinations targeting different fields such as those of computer programs, chemistry and biotechnology have been produced.
3. Examination of international applications that have entered the National Phase:
Where any person who files an international application in accordance with the Patent Cooperation Treaty (PCT) demonstrates his intention to obtain protection for invention or model in China, following the International Phase and according to the provisions stipulated in Article 103 and Article 104 of the detailed rules for implementation, an application shall be filed at the patent office for entry into the National Phase, and procedures for the National Phase shall be activated, which includes: preliminary examination, national publication, substantial examination in accordance with the results of international search and international preliminary examination, approval or rejection and other procedures that might take place within the limits of PCT. This chapter only specifies and stipulates the foresaid special procedures. Any procedure that is not stipulated in this chapter, but identical to the national application procedure, will be possessed in accordance with the provisions stipulated in chapters one and two of section one and section five.
4. Examination of request for re-examination and invalidation:
According to Paragraph 1 of Article 41 of the patent law, a Patent Re-examination Board is established under the State Intellectual Property Bureau to accept, examine and determine any case that appeals against formal examination and substantial examination. Meanwhile, in accordance with Article 45 and Paragraph 1 of Article 46 of the patent law, the Patent Re-examination Board accepts, examines and determines the patent invalidation. If any party concerned disagrees with the decision made by the Patent Re-examination Board, he may bring a lawsuit before a people’s court.
The general principles applicable to the request for re-examination and request for patent invalidation include: (1) principle of legitimacy; (2) principle of fair law enforcement; (3) principle of request; (4) principle of ex officio examination; (5) principle of hearing; and (6) principle of openness.
5. Patent application and transactional processing:
It includes provisions regarding documents and procedures for patent application, fees, acceptance, the preservation and destruction of application documents, confidentiality application and confidentiality review of patents that file applications in foreign countries, the examination notifications and decisions, the recovery and suspension of deadlines and rights, patent gazettes and monographs, granting and cessation of patent rights, evaluation report of patent right and electronic applications, etc.
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