Temporary Rules regarding Examination Work after Implementation of the Amended Chinese Patent Law (Published on May 24, 2021 by CNIPA, Effective from June 1, 2021)
As we reported in our October 2020 Newsletter, the Fourth Amendment to Chinese Patent Law (the Amendment) will be effective from June 1, 2021. We had expected that the corresponding amendments to the Implementing Regulations of the Chinese Patent Law and the Patent Examination Guidelines would have been enacted before June 1, 2021. However, they have not as of late May, and we do not expect this to happen before June 1. Therefore, many practical details regarding how the Amendment will be implemented remain unclear.
On May 24, 2021, in anticipation of the effective date of the Amendment, the CNIPA did publish the above titled Temporary Rules to help implement some of the changes starting from June 1, 2021. We have paraphrased and highlighted in blue the Temporary Rules below, followed by our comments in black.
Rule 1. Starting from June 1, 2021, applications covering partial designs will be accepted. The CNIPA will examine such applications after the enactment of the amended Implementing Regulations of the Chinese Patent Law.
Although there is no further official details regarding how or in what format partial designs should be illustrated or presented in the applications, we think that a combination of solid and broken lines and/or other forms that clearly shows the parts to be protected would be a reasonable form to do so. In this regard, please contact us if you have any questions.
Rule 2. Starting from June 1, if an applicant believes that a relevant disclosure made within 6 months of the application date qualifies as "for public interest purposes during national emergency or extraordinary situation," he may petition, in paper form, for an exception to novelty-defeating disclosures regarding the application. The CNIPA will examine such petitions after the enactment of the amended Implementing Regulations of the Chinese Patent Law.
We think that a typical example of the exception would be for someone to publish a research paper regarding treatment or vaccine for the corona virus before filing the relevant patent application. Other situations may also qualify.
Rule 3. Starting from June 1, 2021, a design patent application may claim priority to a first-filed Chinese design patent application for the same subject matter within six (6) months of the first filing. The CNIPA will examine such applications and the basis for the priority claim after the enactment of the amended Implementing Regulations of the Chinese Patent Law.
Applicant can already do so in invention and utility model patent applications.
Rule 4. Starting from June 1, 2021, for invention and utility model applications, the deadline for submitting a copy of the priority application, if priority is claimed, is 16 months from the earliest priority application date.
Before June 1, 2021, this deadline is 3 months from the current application date.
Rule 5. Starting from June 1, 2021, if a patent is granted after four (4) years from application date and three (3) years from the date of request for substantive examination, the patentee may request, within 3 months of grant publication date, for patent term extension on the basis of unreasonable delays during prosecution of the patent, except for delays caused by the applicant. The CNIPA will examine such requests after the enactment of the amended Implementing Regulations of the Chinese Patent Law.
Although there are no further official details, especially regarding the definition of "delays caused by the applicant," we suggest that patentees actively consider making such request for potentially qualified patents.
Rule 6. Starting from June 1, 2021, in order to compensate for time used for regulatory evaluation and approval of a new drug in China, a patentee may request for patent term extension for a patent relevant to the approved new drug. The request should be made within 3 months of the regulatory approval and may extend the patent term by up to five (5) years. However, the total remaining term of the relevant patent may not exceed fourteen (14) years after the new drug enters market. The CNIPA will examine such requests after the enactment of the amended Implementing Regulations of the Chinese Patent Law.
Although there are no further official details, especially regarding the definition of "new drug" and the related patent link system, we suggest that patentees actively consider making such request for potentially qualified patents.
Rule 7. Starting from June 1, 2021, a patentee may declare its intention, in paper form, to offer Open Patent License of a patent to any interested party. The CNIPA will examine such declarations after the enactment of the amended Implementing Regulations of the Chinese Patent Law.
We think that the provisions will help to further commercialize Chinese patents, but look forward to more details in this regard.
Rule 8. Starting from June 1, 2021, a defendant in an infringement action involving a utility model or design patent before a court or administrative agency, may request, in paper form, a Patentability Assessment Report on the patent from the CNIPA.
Currently only the patentee and interested party can do so upon request by court. We think that this will make the report more important when enforcing utility model or design patents.
Rule 9. Starting from June 1, 2021, the CNIPA will examine a patent application on the basis of (1) whether, in exercising the application or patent right, the applicant/patentee has followed the principle of honesty and credibility and whether it has abused the right to harm public interest or other's legitimate rights, and (2) whether the subject matter belong to the prohibited methods of nuclear transformation or substances obtained by a method of nuclear transformation.
We look forward to more details regarding how the CNIPA will examine and enforce the principals mentioned in (1). Regarding (2), before the Amendment, the prohibition only covers substances obtained by a method of nuclear transformation.
Rule 10. The term of a design patent applied on or before May 31, 2021 will be 10 years from application date.
The terms for design patents applied on or after June 1, 2021 will be 15 years.
Rule 11. These rules are effective from June 1, 2021.
As can be seen, although the Fourth Amendment will introduce a number of major changes to the Chinese Patent Law, many practical details regarding the implementation of these changes are still not very clear, despite the above discussed Temporary Rules. We look forward to the corresponding amendment to Implementing Regulations by the State Council and amendment to the Patent Examination Guidelines by the CNIPA, and will keep you informed.
In the meantime, if you have any questions regarding the Temporary Rules or any other aspects of the Fourth Amendment or Chinese patent practice, please contact us at email@example.com.