Noteworthy Points in the Rules for the Implementation of China’s Patent Law 2023 | Linda Liu & Partners
Recently, the new Rules for the Implementation of Patent Law (hereinafter referred to as “the Rules”) has been approved and promulgated by the State Council, and will come into force on January 20, 2024. There are many amendments in the new Rules, and we have summarized the need-to-know points for your reference.
1. Regarding the principle of good faith
The Rules establishes the breach of the principle of good faith as a reason for rejection both in the preliminary and substantive examination procedures of patent applications, as well as a reason for invalidation.
2. Regarding the submission date and delivery date of electronic applications
The Rules stipulates that the provision for presumed delivery date for mail delivery, which is 15 days from the notifications sending date, does not apply to electronic applications anymore.
3.Regarding the priority system for inventions and utility models
a) Restoration of the priority right
The applicants for an invention or a utility model can request the restoration of priority within 2 months from the expiration date.
b) Addition and correction of priority claims
The Rules adds that the applicant of a patent for an invention or a utility model may, within 16 months from the priority date or within 4 months from the filing date, request to add or correct the priority claims.
4 Regarding the incorporation by reference
The incorporation by reference is introduced for patent applications for inventions and utility models.
5 Regarding the examination of obvious creativity in utility model and design
The Rules adds the examination of whether or not a utility model obviously lacks creativity, and whether or not the design has no significant difference from the existing design or the combination of existing design features during the preliminary examination.
6 Regarding deferred examination
The Rules clarifies that deferred examination can be requested for all types of patent applications.
7. Patent Right Evaluation Report will be public
8 Regarding the examination scope and decision of the reexamination procedure
The scope of reexamination also includes “other obvious violations of the Patent Law and the Rules in the patent application”, and the reexamination decision of “upholding the original rejection decision” has been revised to the decision of “rejecting of the reexamination request”.
9.The Rules stipulates that PTA must be requested within 3 months from grant and is calculated as follows:
a. after 4 years from application date; and
b. after 3 years from the date of filing the request for examination; and
c. minus the unreasonable delay from the applicant
b) Patent Term Extension for pharmaceutical patents (PTE)
The Rules stipulates the following aspects regarding PTE, including the meaning of invention patents related to new drugs, the deadline and requirements for requesting the PTE, the calculation method, and the scope of patent protection during the term extension period.
10. The Rules expand the scope of the “academic or technical conference” for the grace period without losing novelty.
11. The Rules stipulates for the requirements for the application documents of partial design.
12 Regarding domestic priority of design
The Rules provides detailed provisions for domestic priority of design. The prior applications for domestic priority of design can be either design or invention or utility model applications.
13. The Rules clarifies the timing of submitting an open license declaration, specific recorded matters, and the circumstances where open licensing cannot be implemented, and requires the patentee or licensee to make a record with the CNIPA with written documents capable of proving that the license is reached.
14. The Rules increases the inventor remuneration for a granted invention patent from no less than 3,000 yuan to no less than 4,000 yuan, and for a granted utility model or a granted design patent from no less than 1,000 yuan to no less than 1,500 yuan.
15. In the Rules, the provision of “ordering to cease selling” is retained, and the “exemption from the penalty of a fine” is deleted for the case that the product is sold without being aware of the counterfeit patents and its legitimate source can be proved.
16. The Rules stipulates the stay of proceedings where a party requests to the CNIPA after requesting the department in charge of patent to mediate or bringing a lawsuit to the people’s court due to a dispute over the ownership of the patent application right or patent right.
17. The Rules stipulates that where there is a delay in requesting reexamination, the right may be requested to be restored within two months from the expiry of the time limit for reexamination application.
18. Foreign entities can handle some matters on their own.
19. Due to the functional adjustment within the CNIPA, the original rules related to the organization of the Patent Reexamination Board and the interlocutory examination have been deleted
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