China's National People's Congress (NPC) has recently published an updated Draft of Proposed Amendment to Chinese Patent Law. This will be the Fourth (4th) amendment to the patent law and has been discussed for a number of years. The NPC is currently seeking public comments on the Draft.
There are a number of important proposed changes to the law. We have paraphrased and highlighted in blue the key changes below, followed by our comments in black.
Article 2.4 Partial designs will be
allowed.
A much welcomed change. It will provide flexibility to the
applicants and convenience to applicants from countries that allow
partial designs.
Article 6.1 An employer of
service-inventions may dispose its rights to applications or
patents according to law.
This is a clarification rather than substantive amendment.
Article 15.2 For
service-inventions, the state encourages employers to implement
ownership incentives and adopt means such as equities, options, and
profit sharing, etc., to allow the inventors to reasonably share
the benefits of innovation.
Although the provision is only an "encouragement", rather
than a requirement, we do not think that it is necessary or proper.
We think that the employers should be left freely, within the
boundary of law, to decide on how to reward and remunerate the
inventors.
Article 20.1 In exercising the
application or patent right, one should follow the principle of
honesty and credibility, but shall not abuse the right to harm
public interest or other's
legitimate rights.
We generally do not have objections to the provision, but look
forward to further interpretation and details.
Article 20.2 Abusing patent right,
excluding or restricting competition, if constituting monopolistic
conduct, shall be treated according to Anti-Monopoly Law of
China.
We generally do not have objections to the provision, but look
forward to further interpretation and details.
Article 24.1 (1) Newly added
exception to novelty-defeating disclosures: Disclosures made within
6 months of application date and for public interest purposes
during national emergency or extraordinary situation.
We generally do not have objections to the provision, but look
forward to further interpretation and details.
Article 29 Applicant may claim
priority to its own first-filed Chinese design patent application
within six (6) months of the first filing and for the same subject
matter.
We do not have objections to the provision.
Article 42.1 Design patent term
will be extended to fifteen (15) years, from the current ten (10)
years.
It is generally believed that this provision will help clear the
way for China to join the Hague Agreement, which other major
countries have all joined.
42.2 For patents granted after four
(4) years since application date and three (3) years since request
for substantive examination, applicant may request for patent term
extension on the basis of unreasonable delays during prosecution of
the patent, except for delays caused by the applicant.
We do not have objections to this provision and are eager to learn
further details.
42.3 In order to compensate for
time used for new drug evaluation and approval, the term of a
relevant patent for an approved new drug in China may be extended
by up to five (5) years upon request by patentee. However, after
the new drug enters market, the total remaining term of the
relevant patent may not exceed fourteen (14) years.
We do not have objections to this provision and are eager to learn
further details.
Article 48 The CNIPA and provincial
patent administrative authorities should work jointly, at
comparable administrative levels, in taking measures to enhance
patent public services and promote implementation and utilization
of patents.
We do not have objections to this provision.
Articles 50 – 52 Provisions
regarding Open Patent Licenses, setting out mechanisms and
procedures whereby patent owners can publish, through the CNIPA,
their intentions to license their patents to any interested
party.
We do not have objections to the provisions.
Article 66.2 In an infringement
action involving a utility model or design patent before court or
administrative agency, the accused infringer can also submit the
Patentability Assessment Report. Currently only the patentee and
interested party can do so.
We do not have objections to the provision.
Article 70.1 CNIPA, at the request
of patentee or interested party, may handle patent infringement
disputes that have significant impact nationwide.
We think this is an inappropriate enlargement of the CNIPA's
authority and jurisdiction.
Article 70.2 Patent administrative
authority of a local government, at the request of patentee or
interested party to handle patent infringement disputes, may
combine cases involving the same patent within its jurisdiction.
The authority may also request a higher level government authority
to handle cases involving the same patent across different
jurisdictions.
We do not have objections to the provision.
Article 71.1 In case of willful
infringing act, if the circumstances are severe, the court may set
the amount of damages to be one (1) to five (5) times of the
determined amount.
We do not have objections to the provision.
Article 71.2 Statutory damage
amount will be under RMB 5 million (about US$715,000). Currently
the amount is under RMB 1 million.
We do not have objections to the provision.
Article 71.4 In order to determine
the amount of damages, if the plaintiff has done everything within
its ability and the relevant account books and materials are mainly
under the infringer's control, the court may order the
infringer to provide such account books and materials. If the
infringer does not provide or provide false account books or
materials, the court may determine the damage amount by considering
the plaintiff's request and evidence.
We do not have objections to the provision.
Article 74.1 Statute of limitation
for filing infringement lawsuit is three (3) years (currently two
years) from when patentee knew or should have known the
infringement action and the infringer.
We do not have objections to the provision.
Article 75.2 A patentee or
interested party can commence legal proceeding before court or
CNIPA against a party seeking market approval for a drug which the
patentee or interested party believes falls within the scope of a
patent recorded in the Marketed Drug Patent Information Record
Platform of China. The legal proceeding should be commenced within
30 days of the Drug Regulatory Authority's publication of the
drug application. If no such proceeding is initiated within 30
days, the party seeking drug approval can commence legal proceeding
with court or CNIPA to declare that the drug does not infringe the
recorded patent.
We generally do not have objections to the provision. But there are
many details that will need to be clarified.
Article 75.3 If the court or CNIPA
makes an effective judgment/decision within nine (9) months, the
Drug Regulatory Authority can decide, based on the
judgment/decision, whether or not to approve marketing of a
chemical drug that has passed technical reviews. If a party is not
satisfied with the decision by the CNIPA, it can appeal
the decision to the court
within 15 days.
We generally do not have objections to the provision. But there are
many details that will need to be clarified.
Article 75.4 The Drug Regulatory
Authority and the CNIPA will formulate specific linkage methods
regarding drug marketing approval and patent dispute resolution
during the approval period.
We do not have objections to the provision.
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.