December 01, 2009

Two Interim Guidelines for Patent Filings in China Until Enactment of Final Implementing Rules for the New Patent Law

Transitional Measures for Implementation of the Amendments to the Patent Law of the People's Republic of China
Issuing Body: State Intellectual Property Office
Issuing Date: September 29, 2009
Effective Date: October 1, 2009

Circular on Issues Concerning Implementation of the New Patent Law of the People's Republic of China
Issuing Body: Patent Office of the State Intellectual Property Office
Issuing Date: September 29, 2009
Effective Date: September 29, 2009

The Amendments to the Patent Law of the People's Republic of China (New Patent Law) took effect on October 1, 2009, following passage by the Standing Committee of the National People's Congress in December 2008. Seeking to address important questions about the New Patent Law, the State Intellectual Property Office (SIPO) and its Patent Office released two sets of regulations that will serve as interim guidelines for patent filings in China until final implementing rules are enacted.

SIPO released the Transitional Measures for Implementation of the Amendments to the Patent Law of the People's Republic of China (Transitional Patent Law Measures) on September 29. SIPO's Patent Office issued the Circular on Issues Concerning Implementation of the New Patent Law of the People's Republic of China (New Patent Law Circular) on the same day.

While partly designed to align Chinese law with international standards (most notably, by shifting to an "absolute novelty" standard for granting patents), the New Patent Law was more broadly intended to bolster the nation's economy over the long term by strengthening the country's patent protection system—thus fostering technological innovation and domestic ownership of patents. (For more detailed information, see the February 2009 issue of China Law Update.)

Application of the New Patent Law

Under the Transitional Patent Law Measures, the New Patent Law shall be applied under the following circumstances:
  • When a patent application was filed on or after October 1, 2009, and patent rights were granted based on that application
  • With an application for a compulsory license on a patent that was filed on or after October 1, 2009
  • Where patent administration authorities handle a claim of a patent infringement that allegedly occurred on or after October 1, 2009
  • When patent administration authorities handle a claim of counterfeiting a patented device or machine and the alleged counterfeiting occurred on or after October 1, 2009
  • Where a patent mark is affixed to a patented product or package by a patent holder on or after October 1, 2009
  • When a foreigner, a foreign enterprise or another foreign organization that has no permanent residence or place of business in China entrusts or changes his or its patent agent on or after October 1, 2009
Interim Procedures for Patent Filing

Under the New Patent Law Circular, procedures for new patent filings shall be handled as follows:
  • Applicants who own one invention but file for both utility model and invention patents on the same day must fill out two separate application forms created by SIPO, indicating that they are applying for two patents for the same invention.
  • Any entity or individual that completes an invention or utility model in China and files for an overseas patent shall apply to SIPO for confidentiality review in advance and fill out an Application Form for Confidentiality Review of Foreign Patents formulated by SIPO.
  • An applicant who files for a patent on an invention that is based on genetic resources must fill out the Disclosure Form of the Source of Genetic Resources formulated by SIPO to disclose the direct source and origin thereof.
  • An applicant who files for a patent on a design must submit a brief summary of the design, or else the application shall not be accepted. The summary shall be subject to the requirements of the Brief Introduction of Design issued by SIPO in October 2009.
  • SIPO will issue patent right assessment reports for utility model or design patents when the application date (or priority date, if any) is on or after October 1, 2009, but SIPO will only issue a utility model search report when the patent application date (or priority date, if any) is before October 1, 2009.
Conclusion

In the absence of implementing regulations, the New Patent Law left unclear such issues as the time frame for the required confidentiality review when an inventor filed for an overseas patent. Until those implementing regulations are released—and they are reported to be forthcoming—the Transitional Patent Law Measures and the New Patent Law Circular should provide sufficient clarity for SIPO's Patent Office to move forward. In fact, it has been reported that SIPO has already begun accepting filings in the wake of issuing these interim regulations.

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