China Releases Draft Implementation Rules of the Patent Law

Share Post:

On November 27, 2020, the China National Intellectual Property Administration released the draft implementation rules for the amended Patent Law (专利法实施细则修改建议(征求意见稿)).  The draft rules cover changes required to implement the amended patent law, including patent term extension and adjustment, partial design patents, open licensing system and other areas.  The draft rules also add the right to restore priority.

Designs

Article 27 is amended to include a new paragraph regarding newly allowed partial designs:

If you apply for a partial design patent, you should submit a view of the overall product, and use a combination of dotted and solid lines or other means to indicate the content that needs to be protected.

A new Section 11 is added regarding international design procedure, confirming China’s intent to join the Hague System for the International Registration of Industrial Designs.

Right of Priority

A new Article 31.1 adds the right to restore a priority claim:

If an application for a patent on the same subject is not filed with the Patent Administration Department of the State Council within the time limit specified in Article 29 of the Patent Law, the applicant for an invention or utility model patent may request the restoration of priority within 2 months from the expiration date. If the applicant requests restoration of priority, he shall submit a request for restoration of priority, explain the reasons, and pay the prescribed fees. Failure to go through the restoration procedures in accordance with the above regulations shall be deemed to have not claimed priority.

Further, Article 31.2 provides the right to correct a missing or incorrect priority claim with 4 months of filing.

Article 32 now allows an invention patent application or utility model application to claim priority to a design patent application and vice versa.

Patent Right Evaluation Report

Article 56 enable any third party to request a patent right evaluation report of an unexamined utility model patent or design patent.  Previously, only interested parties and the patentee could request a report.  Note that the real party of interest does not need to be identified.

After the decision to grant a utility model or design patent is announced, any entity or individual may request the Patent Administration Department of the State Council to make a patent evaluation report. The applicant may also request the Patent Administration Department of the State Council to make a patent right evaluation report when going through the patent right registration procedures.

Reexamination & Invalidation

New Article 62.1 would let the Patent Reexamination and Invalidation Department raise additional issues in a reexamination proceeding not raised by the parties. Similarly, new Article 68.1 would let the Department raise new issues not raised by the Requester in an invalidation.

Open Licensing System

Articles 72.2 and 72.3 define the new open licensing system – licensing a patent to any takers in exchange for decreased annuity fees.  However, “the annual patent fee paid by the patentee shall be reduced or exempted ” from the Patent Law is not clarified in the draft rules.

Where a patent right is subject to open licensing, the patentee shall submit an open licensing statement to the Patent Administration Department of the State Council after the grant of the patent right is announced.
If the co-owners propose or withdraw the open license statement on the joint patent right, they shall obtain the consent of all co-owners.
The open permission statement should state the following:
(1) Patent number;
(2) The name or title of the patentee;
(3) Payment methods and standards for patent license fees;
(4) The patent license period;
(5) Other matters that need to be clarified.
The content of the open license statement shall be accurate and clear, and there shall be no obvious commercial propaganda language.

Patent Term Adjustment (PTA)

Article 42 of the Patent Law provides for patent term adjustment when prosecution of an invention patent application has taken more than 4 years and more than 3 years from a request for substantive examination minus delays caused by the Applicant.  New Article 85.3 defines Applicant delays as failure to respond to a Notice (e.g., Office Action) within the deadline; delayed examination requested by the Applicant and other circumstances. The deadline to apply for PTA is 3 months from grant.  There may be a fee for requesting PTA as new Rule 100 states,

In the procedures for patent term adjustment and patent term extension, the patentee shall pay relevant fees in accordance with regulations.

Patent Term Extension

Article 42 of the Patent Law also provides for patent term extension (PTE) for the time taken for marketing approval of a new drug and the draft rules provides more details for PTE than PTA.  

Rule 85.4:

For chemical drugs, biological products, and new Chinese medicine product patents, preparation method patents or medical use-related patents that have obtained marketing authorization in China, and meet the conditions for compensation for drug patent term compensation, they may be granted compensation for the term of drug patent.
The new drug-related patents mentioned in the preceding paragraph refer to the patents related to the active ingredients of new drugs approved for the first time by the drug regulatory authority of the State Council. New Chinese medicine patents include patents related to innovative Chinese medicines and patents related to improved new Chinese medicines with increased functions and indications.

Rule 85.5:

The calculation method for the compensation time of the drug patent term is the date on which the new drug applied for registration is approved for marketing in China minus the patent application date, minus 5 years.

Rule 85.6:

During the period of compensation for a drug patent, the scope of protection of the patent is limited to the new drug approved for marketing by the drug regulatory department of the State Council, and is limited to the approved indications of the new drug.
The patent right during the compensation period of the drug patent has the same rights and obligations as before the compensation of the drug patent period.

Rule 85.7:

Where the patentee requests compensation for the duration of the drug patent, it shall submit a request for compensation for the duration of the drug patent to the Patent Administration Department of the State Council within 3 months from the date when the drug marketing authorization application is approved, and the relevant certification documents shall be attached. The patent should meet the following conditions:
(1) Where there are multiple patents for a drug, the patentee can only request compensation for the duration of the drug patent for one of the patents;
(2) Where a patent involves multiple drugs, only one drug can be requested for compensation for the patent term of the patent;
(3) The patent has not yet received compensation for the term of the drug patent;
(4) The remaining period of protection of the patent for which compensation for the period of drug patent is requested is not less than 6 months.

Rule 85.8 lets third parties challenge any PTE determination.

There may be a fee for requesting PTE as new Rule 100 states,

In the procedures for patent term adjustment and patent term extension, the patentee shall pay relevant fees in accordance with regulations.

Conclusion

The deadline to submit comments via email, fax or postal mail is January 11, 2021. The draft rules in comparison table format are available here: 专利法实施细则修改建议(征求意见稿)对照表 (Chinese only).

 

 

 

Author: Aaron Wininger

Aaron Wininger is a Senior Attorney and Director of China Intellectual Property at Schwegman Lundberg & Woessner.

Author: Aaron Wininger

Aaron Wininger is a Senior Attorney and Director of China Intellectual Property at Schwegman Lundberg & Woessner.