On 21 December 2023, after more than two years of revisions, the China National Intellectual Property Administration (CNIPA) issued the finalized version of the revised Rules for the Implementation of the Patent Law, as well as the Guidelines for Patent Examination.
These changes will become effective on January 20, 2024.
Both the new rules and examination guidelines include significant changes that will impact various aspects of patent applications and patent enforcement. More detailed provisions corresponding to the 4th amendments of the Patent Law have been unveiled.
We can see a trend in the Chinese patent law system becoming more aligned and compliant with other major jurisdictions such as better integration with PCT and The Hague Agreement while maintaining its individual characteristics.
Changes to the Patent regulations in China
The changes can be summarized (see below), but it's always better you to get in contact to our team for further assistance with your patent applications in China.
1. Application stage
Period
§ Cancel the 15-day receiving period for electronic notifications
For notifications received through electronic path (CPC system), elimination of the15-day mail delay in calculating most deadlines; The deadline starts from the date when the notification enters the agency's CPC system.
Priority & Novelty
§ Grace period and correction of priority rights (for Utility model & Invention)
In order to better integrate with the PCT system, the new implementation rules of patent law stipulate a 2-month priority grace period for invention and UM (Because PCT is mainly aimed at UM and invention applications) consistent with most PCT signatory countries. That is to say, the priority declaration period for inventions and UM has been extended from 12 months to 14 months, but the 12-14 months period is a grace period that needs to be applied for with valid reasons.
Besides, if an applicant for an invention or utility model patent has claimed priority when submitting a patent application, even if one or more priority rights are omitted or incorrectly filled in during the submission of the patent application, they can still request an increase or correction of priority rights within 16 months from the priority date or 4 months from the application date. However, the above priority addition and modification clauses also do not apply to design patents either.
§ Design applicants can claim domestic priority also from an invention or utility model application;
§ Expanding the situation of not losing novelty from "domestic academic or technical conferences" to "international academic or technical conferences";
Document
§ Combination of dotted and solid lines may be used for partial designs
In order to better align with the Hague Agreement on design, China has accepted and continued to use the expressions of many member states regarding partial design, that is, using dotted lines to represent the parts of a design product that are not required to be protected, and using solid lines to represent the parts that need to be protected.
2. Examination stage
- up to 6 months for a secrecy review decision (similar to the US foreign filing license requirement);
- Good faith requirement for patent application filings. The examination of the principle of good faith and trustworthiness will run through the entire process of preliminary examination, substantive examination, reexamination, and invalidation procedure.
- Added creative examination of design and UM, but only to some applications that clearly lack creativity. This means that CNIPA's examination of design and utility models will become stricter, while the authorization rate will decrease.
- Deferred examination can be requested for invention application by 1, 2 or 3 years, for utility model by 1 year, and for design application by months up to 36 months. It is allowed for the applicant to withdraw the request for deferment before the expiration of the delay period;
- Patent term extension for pharmaceutical patents is calculated by deducting 5 years from the interval between the date of filing of the patent application and date of licensing of the drug;
- Required inventor remuneration can include equity, options, dividends, etc.; Minimum inventor remuneration is raised to 4,000 RMB for invention patent and 1,500 RMB for design and utility model;
- For patents that have modified their claims in invalidation procedures, CNIPA should publish the revised version again;
- Some patent invalidation cases can be directly made decision without a hearing
Patent term adjustment (PTA)
Applicants are entitled to request patent term adjustment within 3 months from patent grant, if the invention patent was granted later than 4 years after the filing date and 3 years after the request for substantive examination.
Where compensation is granted for the patent authorization period, the number of days to be compensated is calculated as grant date minus 4 years from filing date or 3 years from the date of requesting substantive examination (whichever date comes later) and then minus number of days of reasonable delay and the unreasonable delay caused by the applicant.
PTA is not applicable to the invention patent via a dual-filing strategy.
Patent Term Extension (PTE)
PTE is available for new drug related patents, which refer to product patents, preparation method patents and medical use patents of API contained in a "new drug".
"New drug" refers to innovative drugs and specified improved new drugs according to the definition provisions of the related Laws and Regulations, and in accordance with National Medical Products Administration (NMPA) provisions.
N.B. Some of the changes to the Rules for the Implementation of the Patent Law of the People's Republic of China are quite detailed, so you should always seek advice from a local expert to ensure you understand how they relate to your specific applications and circumstances.
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.
