In order to ensure the smooth implementation of the Hague Agreement Concerning the International Registration of Industrial Designs (1999 Act) (hereinafter referred to as the Hague Agreement) in China, and to respond to the urgent examination needs of domestic and foreign innovation entities, and in order to ensure the implementation of the amended Patent Law and respond to the urgent examination needs of innovative entities for partial designs and domestic priorities of designs, the China National Intellectual Property Administration (CNIPA) revised and issued the Interim Measures for the Handling of Relevant Matters after Accession to the Hague Agreement and the Interim Measures for the Handling of Relevant Examination Matters after the Implementation of the Amended Patent Law. Both of the Interim Measures came into force on January 11, 2023.

Some of the changes and adjustments that are involved in the Measures and important to applicants are sorted out here to facilitate the applicants' understanding and timely adjustment of their IP layout strategy.

Those relating to designs (including international design applications)

  1. Patent applicants may file design patent applications for partial designs of a product from June 1, 2021 (inclusive);
  2. For a design patent application filed after June 1, 2021, the applicant may claim priority to a prior domestic design patent application, and the prior application (in the case of a design patent application) shall be deemed to be withdrawn from the date of filing the later application, except that the applicant claims domestic priority to an invention or utility model patent application;
  3. The term of design patents filed before May 31, 2021 (inclusive) is ten years, calculated from the filing date;
  4. From May 5, 2022, Chinese entities or individuals may file international design applications, and the relevant fees stipulated in the Hague Agreement shall be paid by the applicant to the International Bureau directly;
  5. An international design application, for which the date of international registration has been determined and in which China is designated, shall be deemed to be a design patent application filed with the CNIPA, and the date of international registration shall be deemed as the filing date in China;
  6. For international design applications, the applicants shall submit observations in Chinese when filing any response, and where the application text is amended, the amendments shall be in English;
  7. For international design applications, the CNIPA does not charge priority claim fees;
  8. The applicant of an international design application may file a divisional application with the CNIPA within two months from the date of publication of the international design application; if the applicant files a divisional application in accordance with the examination opinion, the divisional application shall be filed within two months from the date of domestic announcement of the original application at the latest;
  9. If the applicant or patentee of an international design application/patent requests a change of rights, in addition to completing the relevant formalities with the International Bureau, they shall also submit supporting documents to the CNIPA. If the supporting documents are in a foreign language, a Chinese translation of the bibliography shall also be submitted;
  10. After the announcement of the grant of an international design application, the applicant may request the CNIPA to issue a copy of the patent register of the international design application as proof of protection in China;

Those relating to patent term compensation:

  1. For invention patents granted on or after June 1, 2021, the patentees may submit a request for patent term compensation in paper form within three months from the date of grant announcement;
  2. Starting from June 1, 2021, patentees may submit a request for patent term compensation in paper form within three months from the date of marketing approval of a new drug;

Those relating to open license:

  1. From January 11, 2023, patentees may voluntarily declare an open license for their patents;

Those relating to patent evaluation report:

  1. From January 11, 2023, an alleged infringer may request the CNIPA to issue a patent evaluation report.

Full texts of the Measures may be found at the following links:

https://www.cnipa.gov.cn/art/2023/1/5/art_74_181248.html

https://www.cnipa.gov.cn/art/2023/1/5/art_74_181249.html

AFD China Newsletter is intended to provide our clients and business partners information only. The information provided on the newsletter should not be considered as professional advice, and should not form the basis of any business decisions.