The China National Intellectual Property Administration CNIPA announced the following:
- On 24 Jan 2022 - Notice of the National Intellectual Property Administrative Protection Work Plan in 2022, https://www.cnipa.gov.cn/art/2022/1/24/art_75_172901.html (the 1st Jan 2022 notice)
- Pm 25 Jan 2022 - Notice of the State Intellectual Property Office on Continuing and Strictly Regulating Patent Application Behavior, https://www.cnipa.gov.cn/art/2022/1/25/art_75_172922.html (the 2nd Jan 2022 notice)
The above could give a glimpse on what the CNIPA is planning to do and/or enhance in 2022, and the coming years. Some interesting observations, in my view (my personal comments are in brackets) are as below:
The 1st Jan 2022 notice
Article 2 - In the trademark area, the CNIPA plans to revise the enforcement standards to more closely in line with those of the court, and issue standards to evaluate trademark (for what? enforcement? for determination of famous trademark?)
Article 3 - For both patents and trademark, the CNIPA plans to continue to crackdown on "abnormal" applications, even to prevent international spillover (may be due to complaints from foreign IP offices like the USPTO). Further, the CNIPA re-emphasize the plan to gradually reduce and eventually cancel various patent grant subsides (see my post https://www.linkedin.com/posts/tobymak_china-stops-subsidizing-patent-filings-https-activity-6760196343316279296-xxiE). These are related and are further elaborated in the 2nd Jan 2022 notice.
Article 4 - The CNIPA is going to establish IP credibility management regulations to identify and punish dishonest players (Would this go to the level of the current bad faith entity list (see my article), let's wait and see). Further, assignment to foreign entities would be strictly controlled (it is now a nightmare to assign a Chinese patent/application from a domestic Chinese entity to a foreign entity, and I do not recommend doing so unless absolutely necessary).
Article 5 - The CNIPA appears to plan to take up more role in administrative adjudication of patent infringement, notwithstanding that the current Chinese Patent Law 2020 restricts that the CNIPA could only accept cases with "nationwide and significant influence". (Well, Chinese are very clever and good at getting around restrictions in laws and regulations).
Article 9 - The areas of focus include food and drugs, seed industry, cement, public health related especially anti-epidemic protective equipment, livelihood materials, agricultural and rural areas, food, and other products that affect the eyesight of children. (If you are in any of these areas, a lot of help from the CNIPA may arrive as the right owner, and may be cracked down hard as an infringer)
The 2nd Jan 2022 notice
General comment specifically recites the following:
- Cracking-down on abnormal patent applications is an important measure to implement the decisions and arrangements of the Party Central Committee and the State Council (therefore, do not expect that the cracking-down would be relieved soon).
- In some places, there are still problems such as insufficient attention to regulating patent application work, insufficient understanding of the harmfulness of abnormal patent applications, limited supervision of agencies, incomplete relevant working mechanisms, and abnormal patent applications are still prominent. (Some places seem to be not doing enough, and now the message is, time to wake up)
Article 1 - one indicator of "abnormal" patents is "the patent lapsed after the 1st year of grant".
Article 2 - All provincial IP offices are required to produce precise management lists to verify the R&D status and innovation capabilities of relevant units and individuals, and submit them to the CNIPA for review and publicity. (I am concerned by how invasive this could be). The benefit is that the frequency of abnormal patent application screening would be reduced if in this list.
Article 3 - The CNIPA and local IP offices would proactively investigate abnormal patent application behaviors.
Article 4 - Once identified as an abnormal application, the following would occur:
- The applicant has no objection - urge the applicant to withdraw the application (over 0.5 million applications have been "urged" to withdrawn in 2021)
- The applicant disagrees - submit response, and will have a look.
- No action from the applicant (no withdrawal, and no submission of response) - crackdown heavily, including cancellation of the following：
- qualification to enjoy the relevant local preferential policies
- qualification to apply for national awards
- qualification to be listed for reduction of abnormal patent application screening
Article 5 - The CNIPA is aware of the following for abnormal applications:
- Abnormally large (how large is large? I have heard over 1000 in one month) number of applications.
- Repeated applications.
- Fraudulent use of other's information to apply. (Could this be a tactic from the competitor......?)
- Shell companies with no R&D investment, no R&D personnel, and no production and operation, or "three-no" shell companies, are applying.
Article 6 - gradually reduce various types of financial subsidies for patent authorization, by at least 25% every year, until they are all cancelled before 2025. (I was concerned in Feb 2021 that the cancellation was merely lip service, but this now looks real to me.
Overall conclusion
The first keyword is "abnormal", which would be cracked-down hard.
The second keyword is "subsidies", which would be gone. For those heavily relying on filings from China, this may be the time to rethink the business plan.
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.