China: SIPO Seeks For Opinions On The Fourth Amendments To The Chinese Patent Law

On April 1, 2015, the State Intellectual Property Office of China (i.e. SIPO) released a notice seeking for public opinions on the newly drafted amendments to the Chinese Patent Law, which were published simultaneously. The drafted amendments pertain to the fourth amendments to the Chinese Patent Law. Routinely, the Chinese Patent Law is amended about every 8 years. Some significant points of the drafted amendments are as follows.


a) Efficacy of a Mediation Agreement and Enhanced Administrative Sanctions against Patent Infringement

The efficacy of a mediation agreement and its execution has been a headache to the patentee in practice. When the accused infringer refuses to fulfill the mediation agreement, the patentee has to additionally institute legal proceedings though an effective mediation agreement is there. The drafted amendments to Article 60 enhance and clarify the efficacy of a mediation agreement made by a local intellectual property office, i.e. where the mediation agreement is affirmed valid by the people's court, it is executable by the court.

Further, the drafted amendments empower the local intellectual property offices (i.e. the patent administration department) administrative measures such as confiscating and destroying the infringing products, the parts, tools, molds and equipments, specially for carrying out the infringing act, so as to enable the local intellectual property offices to be more powerful in handling patent infringement.

For the infringing act in group or repeated infringing act, it not only harms the rights and interests of the patentee directly, but also disrupts the market order and harms the environment of innovation as well as the public interests. The patent administration department may get involved in the case at its own discretion and hold the infringer for administrative accountability.

b) Improved Administrative Fines against Patent Counterfeiting

The drafted amendments to Article 63 improved the upmost administrative fines against patent counterfeiting from the current "a fine of not more than four times of his illegal earnings", "a fine of not more than RMB 200,000 Yuan" to "a fine of one to five times of his illegal turnover" and "a fine of not more than RMB 250,000 Yuan", respectively.

c) Enhanced Administrative Investigation on Patent Infringing or Counterfeiting Act

The drafted amendments to Article 64 are mainly for enhancing the capabilities and authorities of the local intellectual property offices to make investigation on patent infringing or counterfeiting act, solving the difficulty in collecting evidence against patent infringing or counterfeiting act.

d) Punitive Damages for Willful Infringement

The drafted amendments to Article 65 empower the people's court to award double or treble damages for willful infringement to punish the infringement in bad faith and with serious consequences. This is a great change to the current principle of indemnity in awarding damages.

e) Shifting of Burden of Proof re Damages

In consideration of the difficulty in collecting evidence in relation to damages, the drafted amendments to Article 61 provides that, on the premise that the patent owner has tried his best in collecting evidence, the people's court may at its discretion order the accused infringer to submit materials including accounting books in relation to the accused infringing act in order to determine the damages. The damages will be in the patent owner's favor if the accused infringer refuses to submit the ordered materials.

f) Internet Infringement and Safe Harbor Rule for ISPs

With the development of the internet technology and the e-business, patent infringement through internet is also increasing in China. Currently, the people's court can only apply the principles in the Tort Law to determine the liability of internet service providers (i.e. ISPs). By introducing the above article, the ISPs may predict their obligations more accurately. This newly added article also provides for the "notice and take down" rule for the ISPs to effectively remove products being suspected of infringing a patent in especially e-business.


a) Protection of Partial Designs

The drafted amendments to Article 2 introduce protection of a partial design in China, i.e. a design incorporated into a part of an entire product, which is not physically separable from the entire product. This will enhance protection of a design especially when improvements to designs lie in only certain elements.

b) Extended Protection Term for a Design Patent

The drafted amendments to Article 42 provide that the duration of the patent right for design shall be fifteen years, counted from the date of filing. The amendments are for meeting the requirement of the Hague Agreement Concerning International Registration of Industrial Designs. It is expected that China will join the Agreement in the near future.

c) Exception to Un-patentable Subject Matters

The drafted amendments to Article 25(3) prescribe that, methods for the diagnosis or for the treatment of diseases relating to bred animals are patentable subject matters. The amendments are for the purpose of meeting the government policy and for harmonization with the practice in some other countries.

d) Domestic Priority for Design Applications

Drafted Article 29(2) of the Patent Law prescribes that an applicant may claim a domestic priority of a prior design application within six months. The current Chinese Patent Law only provides that an applicant may claim priority to a prior design application filed in a foreign country or area.

e) Authority of the PRB to Examine a Patent Application or Patent at Its Discretion

The Patent Reexamination Board (i.e. the PRB), according to the drafted amendments to Article 41, is authorized to examine at its own discretion, defects, especially obvious defects concerning the merits of the invention, in a patent application without being limited to the scope of the request for patent reexamination during reexamination proceedings. This may help improve the quality of granted patents and the efficiency of patent procurement.

The PRB is also authorized, according to the drafted amendments to Article 46, to examine at its own discretion, during the invalidation proceedings, defects in a patent, especially those obvious defects concerning the merits of the invention which are not raised by the petitioner of the request for invalidation, so as to improve the stability of granted patents and reduce further requests for invalidation against the same patent on different grounds.


a) Statutory Ownership of Service Invention-creation

According to Article 6 of the current Patent Law, an invention-creation made by a person by using the material and technical means of the entity to which he belongs is a service invention-creation. The drafted amendments obviously restrain the statutory scope of service invention-creation, i.e. the ownership of such an invention-creation shall be based on an agreement regarding the ownership, and if there is no such an agreement, the inventor or designer shall be the owner.

b) Obligations of the Entity of a Service Invention-creation

The drafted amendments to Article 16 clarifies that the employer of the inventor or designer has the obligation to reward the inventor or designer and pay a remuneration to the inventor or designer upon exploitation of the invention-creation, regardless whether the invention-creation is transferred to others or not.


a) General Policy for Prompting Exploitation and Operation of Patents

Drafted Article 76 of the Patent Law provides that the local intellectual property offices have the responsibility to promote exploitation and operation of patents.

Drafted Article 78 intends to relieve the constraint of the current system on the state-owned R&D institutions and colleges or universities, endowing the inventors or designers with more rights to exploit the service invention-creation.

c) Commitment License

These newly added Articles 79-81 relate to the commitment license, of which the fundamental purpose is to prompt disclosure of patent information and operation of patents by establishing a platform for those who are interested in exploiting the patent to contact the patentee.

A patent with a declaration of commitment license is open for others to use in a fair, reasonable and un-discriminative manner. This reduces the difficulty of negotiation and the costs and risks in patent transactions.

d) Patent Right Pledge

Newly added Article 83 introduces the relevant provisions relating to patent pledge in the Regulations of the Patent Law into the drafted Patent Law and adds provisions to guarantee the interests of the pledgor.


a) Restriction to Abuse of Patent Right

The amendments to Article 14 will enable the people's court to cite the provisions of the Patent Law directly without relying on other laws when the patentee takes abuse of his patent right in violation of the general principles of good faith, public interests and fair competition etc.

b) Requirements for Submitting the Evaluation Report on Patentability

The drafted amendments to Article 61(2) render the evaluation report on patentability for a utility model patent or a design patent, which is granted without being subjected to substantive examination, one of the prerequisites for instituting a patent infringement litigation before the people's court or for claiming patent infringement before an intellectual property office.

c) Disclosure Requirements for Standard Essential Patents

Newly added article 82 prescribes the obligation of the patent owner to disclose his standard essential patents and the fees for exploiting the SEP, and it aims at protecting the interests of standard exploiters and consumers and urging the patentee who participated in setting of a standard to disclose his patents.


Besides the above amendments, the drafted amendments to the Patent Law generally broaden and enhance the responsibility of the SIPO and the local intellectual property offices to enable the later to play a more important role in patent administration. For the first time, the drafted amendments to the Patent Law provide for the responsibility of Chinese patent attorneys and the nature of the All-China Patent Attorneys Association (i.e. ACPAA) and actions against not-eligible patent agencies and attorneys. (Details of this article may be found on

Originally published August 2015.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.