"Interim Measures for the Processing of Related Examination Businesses Regarding the Implementation of the Amended Patent Law"

Relevant articles of the amended Patent Law

Key amendment

Article 1

As of 1 June 2021, applicants can, based on Article 2.4 of the amended Patent Law, submit design patent applications directed to partial designs of products through paper filing or e-filling.  The CNIPA will examine said applications after the amended Implementation Regulations of the Patent Law are released.

Article 2.4

“Design” means, with respect to the entirety or a part of a product, new designs of the shape, pattern, or the combination thereof, or the combination of the color with shape and pattern, which are rich in an aesthetic appeal and are fit for industrial application.

Partial designs of products become patentable subject matter.

Article 2

For a patent application filed on or after 1 June 2021, if the applicant believes that the patent application involves a situation as set forth in Article 24.1 of the amended Patent Law, the applicant can file a request in paper form.  The CNIPA will examine said applications after the amended Implementation Regulations of the Patent Law are released.

Article 24.1

An invention for which a patent is applied does not lose its novelty where, within six months before the date of filing, one of the following events occurred:

(l) where it was disclosed for the first time for the purpose of public interest when a state emergency or an extraordinary situation occurs in the country.

First disclosure for public interest purpose(s) during a national emergency or any extraordinary state of affairs can enjoy a 6-month novelty grace period.

Article 3

For a design patent application filed on or after 1 June 2021, the applicant can, based on Article 29.2 of the amended Patent Law, make a written declaration to claim priority for the design patent application.  The CNIPA will examine the design application above as well as the earlier design patent application acting as the basis for the priority claim after the amended Implementation Regulations of the Patent Law are released.

Article 29.2

Where, within twelve months from the date on which any applicant first filed in China an application for a patent for invention or utility model, or within six months from the date on which any applicant first filed in China an application for a patent for design, he or it files with the Patent Administration Department under the State Council an application for a patent for the same subject matter, he or it may enjoy a right of priority

Design patent applications can claim a 6-month domestic priority right.

Article 4

For a patent application filed on or after 1 June 2021, the applicant can submit a copy of the patent application documents which were first filed based on Article 30 of the amended Patent Law.

Article 30

Any applicant who claims the right of priority for an invention or a utility model application shall make a written declaration when the application is filed and, submit, within sixteen months from the date when the application was first filed, a copy of the patent application documents which were first filed.

Any applicant who claims the right of priority for a design application shall make a written declaration when the application is filed, and submit, within three months, a copy of the patent application documents which were first filed.

If the applicant fails to make the written declaration or to meet the time limit for submitting the patent application documents, the claim to the right of priority shall be deemed not to have been made.

Time limit for submitting a certificated copy of the priority documents for a utility model or invention patent application is extended to 16 months from the first filing date.

Article 5

For any invention patent granted on or after 1 June 2021, patentees can, based on Article 42.2 of the amended Patent Law, file a request in writing for patent term compensation within 3 months from grant of patent right, and then pay the relevant fees according to the notification issued by the CNIPA.  The CNIPA will examine the request after the amended Implementation Regulations of the Patent Law are released.

Article 42.2

Where an invention patent application is granted after four years from the date of filing and after three years from the date of requesting substantive examination, the Patent Administration Department under the State Council shall, upon the request of the patentee, award a compensation on the term of patent for unreasonable delay in granting the patent for invention, but the compensation on patent term shall not apply to the unreasonable delay caused by the applicant.

Establishment of a patent term compensation system applicable if there has been an “unreasonable delay” in granting procedure.

Article 6

As of 1 June 2021, patentees can, based on Article 42.3 of the amended Patent Law, file a request in wiring for patent term compensation within 3 months from drug marketing approval, and then pay the relevant fees according to the notification issued by the CNIPA.  The CNIPA will examine the request after the amended Implementation Regulations of the Patent Law are released.

Article 42.3

In order to compensate the time spent on the marketing authorization of a new drug, for the patent for invention related to a new drug of which the authorization for marketing in China has been obtained, the Patent Administration Department under the State Council shall, upon the request of the patentee, award compensation on the term of the patent.  The compensated term shall not exceed five years, and the total effective term of patent right after the marketing authorization of the new drug shall not exceed fourteen years.

Establishment of a patent term compensation system applicable if a launch of a patented drug has been postponed due to lengthy administrative approvals.

Article 7

As of 1 June 2021, patentees can, based on Article 50.1 of the amended Patent Law, voluntarily state in writing that he/she or it is willing to grant a license to any entity or individual to exploit his/her or its patent.  The CNIPA will examine the request after the amended Implementation Regulations of the Patent Law are released.

Article 50.1

Where the patentee voluntarily states in writing to the Patent Administration Department under the State Council that it or he is willing to grant a license to any entity or individual to exploit its or his patent, and specifies the payment method and standard of the royalties for the licensing, the Patent Administration Department under the State Council shall announce the open licensing of the patent.

Establishment of open patent licensing system

Article 8

As of 1 June 2021, an accused infringer can, based on Article 66 of the amended Patent Law, file a request in writing asking the CNIPA to furnish a patent right evaluation report.

Article 66

Where any infringement dispute relates to a patent for invention for a process for the manufacture of a new product, any entity or individual manufacturing an identical product shall furnish proof to show that the process used in the manufacture of its or his product is different from the patented process.

Where the infringement relates to a patent for utility model or design, the People’s Court or the administrative authority for patent affairs may ask the patentee or the interested party to furnish a patent evaluation report made by the Patent Administration Department under the State Council after searching, analyzing and evaluating the patent which may be used as evidence to determine or settle patent disputes.  The patentee, the interested party or the accused infringer may also take the initiative to furnish a patent evaluation report.

Accused infringer can request the CNIPA to produce a patent evaluation report.

Article 9

As of 1 June 2021, the CNIPA should conduct examination on patent applications at the stages of preliminary examination, substantive examination and reexamination based on Article 20.1 and Article 25.1(5) of the amended Patent Law.

Article 20.1

The principles of honesty and good faith shall be followed in applying for patents and exercising patent rights.  Patent rights shall not be abused to harm public interests or the legitimate rights and interests of any other person.

Article 25.1(5)

For any of the following, no patent right shall be granted:

(5) nuclear transformation and substances obtained by means of nuclear transformation.

Introduction of the principle of good faith into patent examinations.

Explicit exclusion of methods of nuclear transformation from the scope of patentable subject matter.

Article 10

The duration of patent right for designs filed on or before 31 May 2021 shall be ten years, counted from the date of filing.

Article 42.1

The duration of patent right for inventions shall be twenty years, the duration of patent right for utility models shall be ten years, and the duration of patent right for designs shall be fifteen years, counted from the date of filing.

Term of design patent is extended to 15 years.

Article 11

These Interim Measures will come into effect on 1 June 2021