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China National Intellectual Property Administration Announced the “New Interim Measures for Examination related to the Implementation of the 2021 Amended Patent Law” (Publication No. 510)
China National Intellectual Property Administration Announced the “New Interim Measures for Examination related to the Implementation of the 2021 Amended Patent Law” (Publication No. 510)
The 4th amendment of the China Patent Law took effect on 1 June 2021 (“2021 Patent Law”). Nevertheless, the amendment of the Implementation Regulations of the Patent Law in connection with the 2021 Patent Law has not been completed. To guide the implementation of the 2021 Patent Law, the China National Intellectual Property Administration (CNIPA), on 25 May 2021, announced the “Interim Measures for Examination related to the Implementation of the 2021 Amended Patent Law under Publication No. 423 (“the original Interim Measures”), of which the content was reported in our earlier newsletter
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As stated above, the amendment of the Implementation Regulations of the Patent Law is still ongoing. On 5 January 2023, the CNIPA announced via Publication No. 510 the “Interim Measures for Examination related to the Implementation of the 2021 Amended Patent Law” (“the new Interim Measures”) wherein the CNIPA stated in the same announcement that the original Interim Measures under Publication No. 423 was abolished as of 1 January 2023.
There are 12 articles in the new Interim Measures, incorporating 11 articles of the original Interim Measures with certain amendments and adding 1 new article (Article 10). The major changes are as follows:
1. Amendment Regarding Handling of Design Patent Applications on Partial Designs (Article 1)
In consideration of the urgent need for examining design patent applications covering partial designs (“partial design applications”), Article 1 of the new Interim Measures was amended to cover the requirements for application documents filed for partial design applications and deleted the below-listed requirement originally set forth in the original Interim Measures: “the CNIPA shall commence the examination of partial design applications only after the amended Implementation Regulations is announced and takes effect.” Article 1 of the new Interim Measures states as follows:
“As of 1 June 2021, an applicant may file a design patent application covering a partial design pursuant to Paragraph 4 of Article 2 of the Patent Law, and the patent filing can be done through paper filing or electronic filing.
When filing a design patent application covering a partial design, the applicant must submit to the Patent Office the drawing(s) of the whole product and identify the claimed partial design(s) by using dotted lines and solid lines. If the partial design is a 3-dimensional design, the drawings must include a 3-dimensional drawing(s) clearly showing the partial design. If the applicant does not identify the partial design by using dotted lines and solid lines in the drawing(s) of the whole product, it shall disclose in the brief description the claimed partial design.”
Article 1 sets forth the requirements for the drawing(s) and brief description for filing a partial design patent application. The same Article also allows the CNIPA to start its examination of a partial design application before the amendment of the Implementation Regulations of the Patent Law is announced and takes effect.
2. Domestic Priority Claim for Design Patent Applications (Article 3)
The 2021 Patent Law, for the first time, introduced “domestic priority claim for design patent applications” into the Chinese patent system. In consideration of the urgent need for “domestic priority claim” for design patent applicants, Article 3 was amended to include newly added content, of which the entire content is provided as follows:
“For any design patent application filed on or after 1 January 2021, the applicant can claim a domestic priority claim for the said design patent application pursuant to Paragraph 2, Article 29 of the Patent Law.
For a design application filed with a domestic priority claim to an earlier filed design patent application, the applicant can make the said priority claim for the design of the same subject matter which was covered in the earlier filed design application; where the earlier patent application is an invention patent application or a utility model application, the applicant can file a design patent application with a domestic priority claim to the said invention or utility model application, which covers the same design shown in the drawings of the invention or utility model application.
For a design patent application filed with a domestic priority claim, the earlier filed design application forming the basis for the domestic priority claim shall be considered as having been withdrawn as of the later filed design patent application being filed. The above shall not apply if the earlier filed application in support of the domestic priority claim is an invention patent application or a utility model application.”
According to Article 3 of the new Interim Measures, for a design application filed with a domestic priority claim to an earlier filed design patent application, the design on file must claim the same subject matter as the one covered in the earlier patent application forming the basis of the domestic priority claim. If the earlier filed application is an invention patent application or a utility model application, the design on file must be clearly shown in the drawings of the claimed invention or utility model application. In addition, if the earlier filed application is a design patent application, it shall be considered as having been withdrawn as of the later filed design patent application being filed.
3. Remedial Proceedings Against CNIPA Decisions Issued Pursuant to the Interim Measures (Article 10)
Article 10 of the new Interim Measures states as follows:
“An applicant who is not satisfied with a decision issued by the CNIPA pursuant to the Interim Measures may apply for administration reconsideration or reexamination, or file an administrative suit pursuant to the relevant laws and regulations.”
The remedial proceedings as stated in Article 10 shall depend on the nature of the decisions issued by the CNIPA and the choice of these remedial proceedings shall be same as those available under the current patent administrative remedial practice.
4. Submission Methods Regarding Declaring Novelty Grace Period and Open Patent Licensing as well as Applying for Patent Right Evaluation Reports (Articles 2, 7 & 8)
The new Interim Measures set forth that a declaration for a novelty grace period and open patent licensing as well as applications for patent right evaluation reports can be done through electronic filing. Articles 2, 7 & 8 of the new Interim Measures are as follows:
“As of the date of implementing the Interim Measures, in the case of a patent application filed on or after 1 June 2021, for which, as the applicant considers, an event prescribed in Item 1, Article 24 of the Patent Law exists, the applicant may, via paper filing or electronic filing, file a declaration as to the novelty grace period. The CNIPA shall examine such novelty grace period declaration after the amendment of the Implementation Regulations of the Patent Law is announced and takes effect (Article 2).”
“As of the date of implementing the Interim Measures, a patentee may, via paper filing or electronic filing, file a declaration for open licensing of its patent pursuant to Paragraph 1, Article 50 of the Patent Law. The CNIPA shall examine such open licensing declaration filed on or after 1 June 2021 after the amendment of the Implementation Regulations of the Patent Law is announced and takes effect (Article 7).”
“As of the date of implementing the Interim Measures, an accused infringer may, pursuant to Article 66 of the Patent Law, file an application via paper filing or electronic filing for issuance of a patent right evaluation report issued by the CNIPA (Article 8).”
We will continue monitoring the progress of the ongoing amendment of the Implementation Regulations as well as the ongoing amendment of the Patent Examination Guidelines, and shall duly report any progress in a timely manner to share such information with our clients and friends.