The revised Patent Law of China has taken effect since June 1, 2021. China National Intellectual Property Administration(CNIPA) has recently issued the Answers on main amendments about the revised Patent Law in relation to “protection period for design patents, partial design of a product, national priority of the design, grace period of no loss of novelty, compensation for the duration of the patent, an open license for his patent, the accused infringer requesting a patent right evaluation report, the application of principle of good faith, etc.”. To read and learn the Answers may help better understand the amendments of the revised Patent Law.

 

1. What is the protection period for design patents applied for before May 31, 2021 (including that date)?

In October of 2020, the Standing Committee of the National People's Congress voted to amend the "Patent Law". The revised Patent Law did not make special provisions on the issue of retrospective. Therefore, in accordance with the provisions of the patent law before the amendment, the protection period for the design patent applications and the granted patent rights before the entry into force of the new patent law is ten years.

 

2. Starting from June 1, 2021, can an applicant file a patent application for protection for a partial design of a product ?

With the development of the industry, product design is becoming more refined, and it is more and more difficult to innovate the overall design of mature products. Partial design has gradually become an important manifestation of design innovation. Innovative designers have an increasingly strong demand for protecting partial designs. Therefore, in response to the demands of innovation entities, it clarifies in Article 2-4 of the revised Patent Law that patent protection is granted to “partial” designs of products. Starting from June 1, 2021, applicants can file a patent application for protection for a partial design of a product with CNIPA. However, since the implementation rules of the Patent Law are still in the process of revision and the related supporting electronic systems are under development, starting from June 1, 2021, applicants can temporarily file the above partial design patent applications in the form of paper or offline electronic applications. Our office will review the above-mentioned applications after the newly revised implementation rule takes effect.

 

3. If the application date is after June 1, 2021 (including that date), can the applicant request the national priority of the design? Can the applicant submit a copy of the priority document in accordance with Article 30 of the revised Patent Law?

This revised Patent Law introduces a domestic design priority system, which favors the design applicants the opportunity to further improve the application and clarify the scope of protection. Article 29 of the revised Patent Law stipulates that within six months from the date of filing the first patent application for a design in China, a patent application on the same subject is filed with CNIPA to enjoy the right of priority. If the filing date of a design patent application is after June 1, 2021, and the applicant can submit a written statement to CNIPA requesting the national priority of the design. However, since the implementation rule of the Patent Law are still in the process of revision, our office will examine the above-mentioned applications and the prior design patent applications after the newly revised implementation rule takes effect.

In addition, in order to further facilitate applicants, this revised Patent Law appropriately adjusts the relevant provisions on the deadline for submission of copies of priority documents. Article 30 of the revised Patent Law stipulates that if an applicant claims priority for a patent for invention and utility model, the applicant shall submit a written statement at the time of application, and within 16 months from the date of the first filing of the application the copies of the first application documents shall be submitted. If the applicant claims priority for a design patent, he shall submit a written statement at the time of application and submit a copy of the design application as filed for the first time within three months. If the filing date of a patent application is after June 1, 2021, the applicant can submit a copy of the priority document in accordance with Article 30 of the revised Patent Law.

 

4. Starting from June 1, 2021, can an applicant submit a request for grace period of no loss of novelty in accordance with Article 24-1 of the revised Patent Law?

When a state of emergency or extraordinary situation occurs in the country (such as a major epidemic), some inventions and creations need to be put into practice immediately(publication) to protect the public interest. However, because this said publication does not fall into the exceptional circumstances without loss of novelty as stipulated in the Patent Law before the amendment, which may lead to the risk that the related inventions and creations  could not obtain the protection due to loss of novelty. In order to meet the needs of extraordinary situations such as epidemic prevention and control,  to promote the timely use of these inventions and creations in disease treatment and other aspects, and to solve public health problems, and to better protect inventions and creations.  an exception that does not lose novelty is added in Article 24 of the revised Patent Law adds: when a state of emergency or extraordinary situation occurs in the country, it is first disclosed for the purpose of public interest. For the patent applications with an application date after June 1, 2021 (including that date), if the applicant believes that there are circumstances under Article 24-1 of the revised Patent Law, the applicant may submit a request to CNIPA for grace period of no loss of novelty. However, since the implementation rules of the Patent Law are still in the process of revising, and the relevant supporting electronic systems are under development, from June 1, 2021, applicants can temporarily submit requests in paper form, and our office will implement the newly revised patent law. The above application will be reviewed after the newly revised implementation rule takes effect.

 

5. For the invention patents as granted from June 1, 2021, can the patentee file a request for compensation for the duration of the patent in accordance with the Article 42-2 of the revised Patent Law?

In October 2020, the Standing Committee of the National People's Congress voted to amend the "Patent Law". The revised Patent Law did not make special provisions on the issue of retrospective. Therefore, for invention patents as announced and granted before May 31, 2021 (including that date), the patent right duration compensation system is not retroactive.

As a supporting regulation of the Patent Law, the Implementing Regulations of the Patent Law, which are currently being revised, have detailed provisions on the relevant content of the patent right term compensation system, including the request time and unreasonable delays caused by the applicant. The draft amendments to the implementation rules of the Patent Law have been publicly solicited opinions from the public from November 27, 2020 to January 11, 2021. Based on extensive solicitation of opinions and research and demonstration, the draft proposes that the patentee should submit the proposal to our office within three months from the date of the granting announcement.

In addition, because the implementation rules of the Patent Law are still in the process of revising, and related supporting electronic systems are under development, for invention patents granted from June 1, 2021, the patentee can temporarily submit a request for compensation for the duration of patent right to CNIPA in paper form within three months from the date of granting announcement and then pay the relevant fees in accordance with the payment notice issued by CNIPA. Our Office will review the above-mentioned request after the newly revised implementation rule takes effect.

 

6. If the application for the marketing license of new drug is approved, can the patentee file a request from June 1, 2021 for compensation for the duration of the patent in accordance with Article 42-3 of the revised Patent Law?

In October 2020, the Standing Committee of the National People's Congress voted to amend the "Patent Law". The revised Patent Law did not make special provisions on the issue of retrospective. Therefore, for new drug-related invention patents that have obtained marketing approval before May 31, 2021 (including that date), the drug patent right period compensation system is not retroactive.

Article 42-3 of the revised Patent Law stipulates that, in order to compensate for the time as  taken up by the new drug marketing review and approval, CNIPA shall grant the compensation for the duration of the patent at the request of the patentee for the new drug-related invention patents that have been approved for marketing in China.  The compensation period shall not exceed five years, and the total effective patent right period after the new drug is approved for marketing shall not exceed 14 years. As a supporting regulation of the patent law, the implementation rules of the patent law is currently being revised to detail the relevant content of the drug patent right period compensation system, including the applicable drugs and patent scope, the calculation method of the compensation period, the scope of protection during the compensation period, and the compensation conditions. The draft amendments to the implementation rules of the Patent Law have been publicly solicited opinions from the public from November 27, 2020 to January 11, 2021. On the basis of extensive solicitation of opinions and research and demonstration, the draft proposes to provide compensation for the drug patent duration for new drug products, preparation methods, and medical use-related patents. The compensation request may be filed to our office within three months from the date when the new drug is approved for marketing.

As the implementation rules of the Patent Law are still in the process of revising, the relevant supporting electronic systems are under development. Starting from June 1, 2021, after obtaining the approval for the marketing of new drugs, the patentee can within three months from the date of approval of the request, temporarily submit a paper form to the State Intellectual Property Office for compensation for the duration of the patent right and then pay the relevant fees as per the payment notice issued by the our Office in accordance with Article 42 - 3 of the revised Patent Law. Our office will review the above-mentioned applications after the newly revised implementation rule takes effect.

 

7. Starting from June 1, 2021, can the patentee voluntarily declare to implement an open license for his patent?

In order to promote the transformation and application of patents, and to solve problems such as the asymmetry of supply and demand information in the patent markets, this revised Patent Law introduces the open licensing system. Article 50 -1 of the revised Patent Law stipulates that if the patentee voluntarily declares in writing to CNIPA that he is willing to license any entity or individual to exploit his patent, and that clarify the payment method and standard of the license fee,CNIPA shall make an announcement and implements an open license. Starting from June 1, 2021, patentees can voluntarily declare to implement an open license for their patents in accordance with the provisions of Article 50-1 of the Patent Law. However, as the implementation rules of the Patent Law are still in the process of revising, and related supporting electronic systems are under development, starting from June 1, 2021, patentees can temporarily voluntarily declare open licenses for their patents in paper form. Our Office will review the above statement after the newly revised implementation rule takes effect.

 

8. From June 1, 2021, can the accused infringer request a patent right evaluation report?

The Article 66-2 of the revised Patent Law stipulates that if a patent infringement dispute involves a utility model patent or a design patent, the people’s court or the administrative department may require the patentee or interested parties to submit the patent right evaluation report after searching, analyzing and evaluating regarding the related utility models or designs, as issued by CNIPA, which shall be used as evidence for trial and handling of patent infringement disputes; the patentees, interested parties or the accused infringers can also proactively submit the said patent right evaluation report. This amendment to the Patent Law expands the subjects who can request to submit a patent evaluation report to the accused infringer. This amendment will help  fully assess the risk of infringement and take reasonable countermeasures, which will help both parties to form a reasonable expectation of the patent right and promote dispute resolution and to reduce the cost of rights protection. Therefore, from June 1, 2021, the accused infringer can request a patent evaluation report. However, because the implementation rules of the Patent Law are still in the process of revising, and the relevant supporting electronic systems are under development, starting from June 1, 2021, the accused infringer can temporarily request our office to issue a patent evaluation report in paper form.


9.Starting from June 1, 2021, can CNIPA examine patent applications in the preliminary examination, substantive examination and reexamination procedures in accordance with the “principle of good faith”?

 The principle of good faith is one of the most important basic principles of civil law. As early as 1986, Article 4 of the General Principles of the Civil Law stipulates that civil activities should follow the principles of involuntariness, fairness, compensation for equal value, and good faith; on January 1, 2021,  Article 7 of the Civil Code that came into effect stipulates that "Civil entities engaged in civil activities shall follow the principle of good faith, uphold honesty, and abide by their promises." Patent right is an important civil right. Whether it is applying for a patent or exercising a right, it should follow the principle of good faith, and the patent right can no be obtained through plagiarism, forgery, etc., and the patent right cannot be abused in violation of the principle of good faith. Therefore, Article 1 of the Patent Law clearly states the purpose of the legislation to encourage inventions and creations, to promote the application of inventions and creations, and to improve innovation capabilities; Article 5 stipulates that patents shall not be granted for inventions and creations that violate the law, social morality, or interfere with the public interest. . The irregular patent application behavior in patent application not only violates the legislative purpose of the patent law, but also violates the basic principle of good faith in the civil law.

Therefore, starting from June 1, 2021, CNIPA will examine patent applications in the preliminary examination, substantive examination, and reexamination procedures in accordance with Article 20-1 of the revised Patent Law, which stipulates that “the principle of good faith shall be followed when applying for a patent and exercising patent rights. Do not abuse the patent right to damage the public interest or the legitimate rights and interests of others”.

 

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Answers from CNIPA to Related Questions About the Revised Patent Law