China Issues Draft “Measures Regarding the Regulation of Patent Applications” to Crack Down on ‘Abnormal’ Patent Applications

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On February 10, 2021, the China National Intellectual Property Administration (CNIPA) released the Measures on Regulating Patent Applications (Draft for Comment) (关于规范申请专利行为的办法(征求意见稿)). The draft defines abnormal (read junk) patent applications, related behaviors and the penalties for these behaviors.  Apparently, CNIPA does not actually want comments because these draft measures were released right before the week-long Chinese New Year holiday and CNIPA is providing a very short period to submit comments – 16 days.   These measures and the concurrent elimination of monetary incentives for patent filings should decrease the total amount of applications filed in China and specifically junk patents (which would seem to be inherently high just based on the number of applications filed per year per GDP per capita in China).

Abnormal patent application behaviors include:

(1) Simultaneously or successively submitting multiple patent applications that are obviously the same invention-creation, or are essentially formed by simple combinations of different invention-creation features or elements; 

(2) The submitted patent application contains fabricated, forged or altered inventions and creations, experimental data or technical effects, or plagiarism, simple replacement, patchwork of existing technology or existing designs, etc.;

(3) The invention-creation of the submitted patent application is obviously inconsistent with the applicant’s actual research and development capabilities and resource conditions;

(4) The invention-creation content of the submitted patent application is mainly randomly generated using computer programs or other technologies;

(5) The invention-creation of the submitted patent application is an invention that is deliberately formed for the purpose of evading patentability examination and is obviously inconsistent with technical improvement or design common sense, or has no actual protection value, or unnecessarily reduces the scope of protection, or contains no contents of search or examination significance;

(6) In order to evade the regulatory measures against irregular patent applications, multiple patent applications that are substantially associated with or under the control of a specific applicant are submitted in a scattered or  sequential order or in a different location;

(7) Based on an original application with authorization prospects, multiple divisional applications are proactively filed, but there is essentially no legal or technical necessity;

(8) Not buying or reselling patent application rights or patent rights for the implementation of patented technologies, designs, or other legitimate and reasonable legal purposes, or falsely altering inventors or designers;

(9) Patent agencies, patent attorneys, or other institutions or individuals who induce, abet or conspire with others, or know or should know that it is an abnormal patent application and act as an agent or help others to implement various types of abnormal patent applications;

(10) Other irregular patent applications and related actions that violate the principle of good faith and disrupt the normal order of patent work.

If determined that an application is abnormal, a special examination working group or Examiner may implement special examination procedures, inform the applicant, and require the applicant to immediately stop the relevant actions and withdraw the relevant patent applications or legal procedures within a specified time limit or respond why the patent application is not abnormal.

If the applicant is dissatisfied with the above decision of the CNIPA, the applicant may file an administrative reconsideration application, reexamination request or administrative litigation request according to law.

The All China Patent Agents Association should self-regulate patent firms that violate (2) and(9) above.  If the circumstances are serious or repeated, the CNIPA or the administrative department of patents shall impose corresponding punishment on them in accordance with laws and regulations.

There is also potential criminal liability and violations of the above can cause a case to be transferred to relevant agencies for criminal investigation and prosecution.

The full text is available here: 附件1:《关于规范申请专利行为的办法(征求意见稿)》(Chinese only).

Comments can be submitted before February 26, 2021 by:

1. Email: tiaofasi@cnipa.gov.cn

2. Fax: 010-62083681

3. Letter: Examination Policy Division, Department of Treaty and Law, State Intellectual Property Office, No. 6 Xitucheng Road, Haidian District, Beijing, 100088 (please indicate “Regulation of Patent Applications” in the lower left corner of the envelope).

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.