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Laws and Regulations |
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Methods on the
Administration of Recordal of Patent License Contract
Methods on the Administration of Recordal of Patent
License Contract
(December 17, 2001)
Rule 1. These Methods are enacted in accordance with the
Contract Law of PRC, the Patent Law of PRC, the
Implementing Regulations of the Patent Law of PRC, and
related laws and regulations to ensure the protection of
patent right, to standardize transactions thereof, and
to promote the patent exploitation.
Rule 2. State Intellectual Property Office shall be
responsible for the recordal of patent license contract
(including license contract of patent application,
hereinafter referred to as "patent contract")
throughout the country.
The administrative authority for patent affairs of each
province, autonomous region and municipality directly
under the Central Government shall be responsible for
the recordal of patent contract in the respective
administrative regions (hereinafter referred to as local
recordal administration) under the authorization of the
SIPO.
Rule 3. The Assignor in these Methods refers to the
patentee, patent applicant or any other proprietor in
the patent contract, while the assignee refers to the
other party in the patent contract.
Rule 4. The Assignor shall be the legitimate patentee,
or patent applicant, or any other proprietor.
Where there are two or more joint patentees or patent
applicants, the assignor shall be all patentees or
patent applicants of the patent or the patent
application.
Rule 5. The interested party shall go through recordal
formalities within 3 months from the date the patent
contract enters into effect.
Rule 6. Where the assignee with recorded patent license
contract has evidence to prove any third party is
executing or is to execute infringement of his patent
right, and his legitimate right and interests shall
suffer irreparable damages if the infringement is not
duly prohibited, he may apply with the people's court
for injunction on the said party's infringement of the
patent right.
The assignee of the exclusive license contract of patent
exploitation may on his own part file the application
with the people's court in accordance with relative laws
and regulations. The assignee of the sole license
contract of the patent exploitation may file the
application on conditions that the patentee does not
file the same.
The assignee with recorded patent contract may request
the local recordal administration to handle the patent
infringement that is happening or has already happened
in accordance with the provisions of Article 57 of the
Patent Law.
Rule 7. The interested party shall go through
formalities of foreign exchange, customs recordal of IP
rights with the certificate of recordal of the patent
contract.
Rule 8. The items recorded in the patent contract
including the nature, scope, time, fees of license may
be used as references in the mediation or determination
of the damages of infringement dispute by the people's
court or administrative authority for patent affairs.
Rule 9. The patent contract shall be signed in writing
by the interested parties.
Rule 10. The patent contract may be signed in the format
that is stipulated by the SIPO. Where any other contract
format is adopted, it shall be in conformity with the
laws.
Rule 11. Where any foreigner, foreign enterprise or any
foreign organization having no habitual residence or
business office in China files a recordal of the patent
contract in China, he or it shall entrust a patent
agency designated by the SIPO to handle the recordal of
the patent contract in the country.
Where any Chinese entity or individual files the
recordal of patent contract in the country, it/he may
entrust a patent agency to handle the matter.
Rule 12. The interested parties shall fill in the
application form of the recordal of the patent contract
and sign or seal it in accordance with the articles in
the contract.
Rule 13. Two copies of the following documents shall be
filed for the recordal of the patent contract:
(1) Application Form of Recordal;
(2) Copies of the Contract;
(3) Duplicated copies of Patent Certificate or
Notification of Receipt of Patent Application;
(4) Identity Certificate of the Assignor;
(5) Other douments.
Rule 14. The interested party shall file all the
documents in Chinese in print form to be carried on one
side of A4 paper. In case the filing documents are in
foreign languages, the interested party shall submit the
Chinese version thereof within the prescribed time
limit. If the Chinese version is not submitted at the
expiration of the time limit, the application shall be
deemed not to have been submitted.
Rule 15. The patent contract shall not be recorded if it
involves one of the following situations:
(1) where the patent right is terminated or declared
invalid or the patent application is refused, withdrawn
or deemed to be withdrawn;
(2) without consent of joint patentees or applicants,
one patentee or applicant freely signs the patent
contract with any other party;
(3) the same patent contract is repeatedly applied for
recordal;
(4) term of patent contract exceeds the validity term of
patent right;
(5) other situations not in conformity with laws.
Rule 16. The local recordal administration shall, after
receiving the recordal application, duly report the
application form of recordal to the SIPO in the format
as required to confirm the legal status of the patent
right or patent application right.
Rule 17. The local recordal administration shall issue
the certificate for approval of recordal to the
interested party within 7 days when the application for
recordal of the patent contract conforms to the
requirements. Where the application does not conform to
the requirements, the local recordal administration
shall issue the notification of refusal of recordal to
the interested party.
Rule 18. The local recordal administration shall send
its recordal comments and filing documents of the
interested party to the SIPO within 3 days after
completion of the recordal procedures.
Rule 19. The SIPO shall construct a database of recordal
of patent contracts to administer the recordal data and
for public search.
Rule 20. The SIPO shall register related content of
recordal of the patent contract in the patent register
book and publish the following content in the patent
gazette: filing number of the contract, assignor,
assignee, main classification number, patent number,
patent application date, publication date of grant,
contract nature, recordal date, term of the contract,
and alternation of the contract.
Rule 21. Where the interested parties terminate the
patent contract before the contract term expires, they
shall go through the formalities of cancellation of
recordal with the original recordal administration by
submitting the termination agreement, recordal
certificate and other relevant documents within 10 days
from the executing date of the termination agreement.
Where the cancellation of the patent contract is not
handled within the prescribed time limit, the original
recordal shall continue to be effective until the
expiration of the term of the original patent contract.
Rule 22. Where the term of a patent contract is
prolonged, the interested parties shall go through the
formalities of recordal alternation with the original
recordal administration by submitting the alternation
agreement, recordal certificate and other documents two
months before the expiration of the term of the original
contract.
Where other content in the patent contract is altered,
it shall be handled in reference to the preceding
paragraph.
Rule 23. Where the patent right is transferred in the
process of implementation of the patent contract, such a
transfer shall not bear any effect on the original
patent contract unless it is otherwise provided by the
interested parties.
Rule 24. Where a patent application is approved, the
interested party shall duly alter the name of the
license contract of patent application exploitation and
related articles into license contract of patent
exploitation.
Where a patent application is refused or is deemed to be
withdrawn, the interested party shall duly manage the
formalities for the cancellation of recordal of the
patent contract.
Rule 25. Where the patent right is declared invalid
during the fulfillment of the patent contract, the
interested parties shall duly manage the formalities for
the cancellation of recordal. The effectiveness of the
decision of invalidation declaration on the fulfilled
patent contract shall be in reference to the related
laws.
Rule 26. Where a party files false documents of recordal
or obtains or fabricates the recordal certificate for
patent contract in illegal means, the local recordal
administration shall cancel the contract recordal and
impose due punishment.
Rule 27. Local recordal administrations shall strengthen
professional training and assessment of the related
persons and standardize administration of patent licence
transaction in accordance with laws.
Rule 28. If any local recordal administration fails to
fulfil its functions as required, the SIPO shall suspend
or even revoke its qualification for recordal.
Rule 29. Days in these Methods mean the working days.
Rule 30. The SIPO shall be responsible for the
interpretation of these Methods.
Rule 31. These Methods shall come into effect as of
January 1, 2002.
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