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The Need-to-Know Amendments in the New Rules for the Implementation of China’s Patent Law

On December 21, 2023, 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 amendments for your reference.
Point 1: The violation of the principle of good faith is established as a ground for rejection in patent examination and invalidation proceedings.

Under Article 11, 50, 59, and 69, the violation of the principle of good faith is established as a ground for rejection of a patent application in preliminary examination and substantive examination, as well as a ground for invalidation in invalidation proceeding. The Rules also stipulates that “a patent application shall be based on real invention-creation activities” and that an abnormal application will not be granted patent protection.

Article 100 adds that the applicant or patentee who violates the principle of good faith shall be warned and may be fined up to 100,000 yuan.
Point 2: The response period is shortened as the 15-day mail delay is eliminated when calculating most deadlines.

Article 4 provides for the submission date and delivery date of electronic filing.

The stipulation on the presumed delivery date for mailing no longer applies to electronic filing, and the response period is shortened as the 15-day mail delay is eliminated when calculating most deadlines.
Point 3: The new Rules explicitly specifies that restoration of the right can be requested within two months from the expiration date of the time limit for requesting a re-examination

Article 6 explicitly specifies that if there is a delay in requesting a re-examination, the right may be requested to be restored within two months from the date of expiration of the time limit for requesting a re-examination.
Point 4: Confidentiality review decision shall be made within 6 months at latest

Article 9 explicitly provides for the time limit for reviewing foreign patent applications for inventions and creations made in China. It mandates that the CNIPA shall make a confidential review decision to approve or reject the request within 6 months at latest.
Point 5: Foreign party could deal with some simple matters on their own without having to commission a patent agency under Article 18 in the new Rules.
Point 6: Fewer requirements for the specification abstract and the figure accompanying the abstract

Article 26 amends the requirements for the specification abstract and the figures accompanying the abstract. Figure accompanying the abstract only need to be specified in the request, and the format requirement of the figure accompanying the abstract and the limitation on the number of words in the text part of the abstract have been deleted, which however are still retained in the Guidelines for Patent Examination.
Point 7: Partial design

Article 30 and Article 31 provide for the requirements for application documents for partial designs.
Point 8: Regarding the Hague Agreement for Design

The Rules adds a new Chapter 12, “Special Provisions on International Applications for Design”, to stipulate for the examination rules for design applications through the Hague Agreement.
Point 9: Domestic priority for a design can be claimed.

Article 35 prescribes on the domestic priority for a design. Applicants can claim domestic priority for a design from an invention or utility model application.
Point 10: Grace period without losing novelty

Article 33 expands the scope of “academic conferences or technical meetings” for the grace period without losing novelty to include “academic conferences or technical meetings convened by international organizations recognized by the competent department of the State Council”, and relaxes the requirement of documents for international exhibitions or academic conferences or technical meetings.
Point 11: Priority system for inventions and utility models

I. Restoration of priority right

Article 36 provides that an applicant for an invention or utility model may request the restoration of priority within two months from the date of expiration of the period. Accordingly, Article 128 provides for the restoration of priority right for PCT applications.

II. Additions and corrections to priority right claims

Article 37 provides that an applicant for a patent for an invention or utility model may, within 16 months from the priority date or 4 months from the filing date, request to add or correct the priority claim.
Point 12: Incorporation by reference

Article 45 provides for the introduction of the incorporation by reference system for invention and utility model patent applications. If the applicant has claimed the priority on the filing date, he or she may add the contents of the priority document to the pending patent application within 2 months from the filing date or within the period designated by the CNIPA with the filing date of the pending patent application maintained.
Point 13: Documentation requirements for divisional application

Article 49 provides for the simplification of the procedures for filing a divisional application by eliminating the requirement of filing a copy of the original application document and a copy of the priority document of the original application.
Point 14: Examination of obvious creativity in utility model and design

Article 50 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 during the preliminary examination.
Point 15: Deferred examination

Article 56 explicitly specifies that an applicant may request a deferred examination of a patent application (invention, utility model and design patent applications).
Point 16: Patent Right Evaluation Report

Article 62 expands the scope of entities that can request the Patent Right Evaluation Report. In addition to the patentee and interested parties, the “accused infringer” can also request the Patent Right Evaluation Report. Moreover, an applicant can request the Patent Right Evaluation Report when going through the patent registration procedures. In this case, the CNIPA shall issue a Patent Right Evaluation Report within 2 months from the date of announcement of the patent grant.
Point 17: Adjustment of the name of the reexamination and invalidation examination institution

Due to the functional adjustment within the CNIPA, Article 59 and Article 62 in the original rules relating to the organization structure of the Patent Reexamination Board and the interlocutory examination have been deleted. The interlocutory examination proceeding has been regulated in the Patent Examination Guidelines, in which “the original examination department” has been changed to “the examination department”.

Point 18: Regarding the examination scope and decision of the reexamination procedure

The examination scope and decision of the reexamination procedure have been amended. Article 67 in the new Rules prescribes that 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 amended to the decision of “rejecting of the reexamination request”.
Point 19: The claims going through invalidation will be public

Article 73 provides that the claims that have been amended and remain valid in the invalidation proceedings shall be public.
Point 20: Patent term compensation

a) Patent Term Adjustment (PTA) due to examination delay

Article 77, 78, and 79 in the new Rules stipulate for the request period and calculation rules for PTA due to examination delay. PTA must be requested within 3 months from grant and is calculated as follows:

a. the number of days spanning from the date on which 4 years have passed since the filing date of the patent application for the invention and 3 years have passed since the date of the request for substantive examination to the date on which grant of patent right is announced, and;

b. minus the number of days of unreasonable delay caused by the applicant and reasonable delay.

The rules specifically stipulates what is “reasonable delay” and “unreasonable delay caused by the applicant”, and stipulates that the PTA does not apply to the invention patent filed on the same day as the utility model for the same invention-creation, where the invention patent is granted by abandoning the utility model.
b) Patent Term Extension (PTE) for pharmaceutical patents

Article 80, 81, 82, and 83 in the new Rules provide for the following aspects regarding PTE for pharmaceutical patents, 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.
Point 21: Adjustment of provisional protection for internationally published applications in Chinese language

Article 132 provides that for an international application published in Chinese Language by the International Bureau, and the period of provisional protection shall be adjusted from “from the date of international publication” to “from the date of international publication or from the date of publication by the CNIPA”, so as to avoid unreasonable situations where the CNIPA’s publication date is earlier than the international publication date.
Point 22: Regarding the Open License System

Article 85, 86, 87, and 88 clarify 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.
Point 23: Regarding the legal standard of inventor remuneration

Article 93 and Article 94 in the new Rules increase 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, and stipulates that reasonable remuneration shall be given to the inventors in accordance with the provisions of the Law of Promoting the Transformation of Scientific and Technological Achievements, that is, the proportion of patent implementation remuneration has also been increased.
Point 24: Regarding the handling of acts of counterfeiting patents

In Article 101, 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.
Point 25: Regarding the Stay of proceedings

Article 105 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. The Rules adds the provision that “if the CNIPA considers that the reason for the stay requested by the party concerned is obviously unfounded, relevant proceedings may not be stayed.”
Point 26: Patent administrative agency for handling and mediating patent disputes

Article 95 expands the scope of paten administrative agency for handling and mediating patent disputes.
Point 27: The circumstances where the CNIPA is responsible for handling patent infringement dispute

Article 96 specifies the circumstances of “patent infringement disputes of national significance.”
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