Legislation
The Patent Law is enacted to protect the legitimate rights of patentees, to encourage inventions-creations, to advance the exploitation of inventions-creations, to enhance innovation capability, and to promote the progress of science and technology and the development of economy and society.
Inventions-creations in this article mainly mean designs.
Patent Law
March 12, 1984: Adopted by the Standing Committee of National People's Congress (“the NPC Standing Committee”);
September 4, 1992: Amended first by the NPC Standing Committee;
August 25, 2000: Amended secondly by the NPC Standing Committee;
December 27, 2008: Amended thirdly by the NPC Standing Committee;
October 17, 2020: Amended fourthly by the NPC Standing Committee;
Implementing Regulations of the Patent Law
January 19, 1985: Promulgated by the State Council and entered into force on April 1;
December 12, 1992: Amended by the State Council and entered into force on January 1, 1993, and repealed on July 1, 2001;
June 15, 2001: Promulgated by the State Council and entered into force on July 1, 2001;
December 28, 2002: Amended first by the State Council;
January 9, 2010: Amended secondly by the State Council;
December 11, 2023: Amended thirdly by the State Council.
Conventions
China became a member of Convention Establishing the World Intellectual Property Organization on June 4, 1980, the Paris Convention for the Protection of Industrial Property on March 19, 1985, the Patent Cooperation Treaty (PCT) on January 1, 1994, the Regulations under the Patent Cooperation Treaty on January 1, 1994, the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure on July 1, 1995, the Locarno Agreement Establishing an International Classification for Industrial Designs on September 19, 1996, the Strasbourg Agreement Concerning the International Patent Classification on June 19, 1997, the Marrakesh Agreement Establishing the World Trade Organization on December 11, 2001, and the Hague Agreement Concerning the International Registration of Industrial Designs on May 5, 2022.
Types of Patents
There are three types of patents in China: invention patents, utility model patents and design patents.
Design
Design means any new design of the shape, the pattern, or their combination, or the combination of the color with shape or pattern, of the whole or a part of a product, which creates an aesthetic feeling and is fit for industrial application.
Patent Administration
The China National Intellectual Property Administration (CNIPA) is responsible for the patent work throughout the country. It receives and examines patent applications, and grants patents in accordance with the law.
The local intellectual property offices in provinces, autonomous regions and municipalities directly are responsible for the administrative work concerning patents in their respective administrative areas.
Obtaining a Patent
For obtaining a patent, the right holder of invention-creations shall submit a patent application to the CNIPA. After examinations, the CNIPA will grant a patent if the conditions for granting a patent are met.
Service Invention-creation
An invention-creation, made by a person in execution of the tasks of the entity to which he belongs, or made by him mainly by using the material and technical means of the entity is a service invention-creation.
"A service invention-creation made by a person in execution of the tasks of the entity to which he belongs" means any invention-creation made (l) in the course of performing his/her own duty; (2) in execution of any task, other than his/her own duty, which was entrusted to him/her by the entity to which he belongs; (3) within one year from his/her retirement, resignation or from termination of his/her employment or personnel relationship with the entity to which he/she previously belonged, where the invention-creation relates to his/her own duty or the other task entrusted to him/her by the entity to which he previously belonged.
"The entity to which he belongs" includes the entity in which the person concerned is a temporary staff member.
"Material and technical means of the entity" mean the entity's money, equipment, spare parts, raw materials or technical information and materials which are not disclosed to the public, etc.
Inventors/Creators/ Designers
Creative Contributions
"Inventor" or "creator" means any person who makes creative contributions to the substantive features of an invention-creation.
Any person who, during the course of accomplishing the design, is responsible only for organizational work, or who only offers facilities for making use of material and technical means, or who only takes part in other auxiliary functions, shall not be considered as inventor or creator.
Designer is the inventor or creator of the design that created the novel and ornamental design for an article of manufacture.
Designer has the right to be named as such in the patent document.
Incentives
The entity that is granted a patent shall award to the inventor or creator of a service invention-creation a reward and, upon exploitation of the patented invention-creation, shall pay the inventor or creator a reasonable remuneration based on the scope of promotion and application and the economic benefits achieved.
The entity may, on the manner and amount of the reward and remuneration mentioned above, enter into a contract with the inventor or creator, or provide it in its rules and regulations formulated in accordance with the laws.
Where the entity has not entered into a contract with the inventor or creator on the manner and amount of the reward, nor has the entity provided it in its rules and regulations formulated in accordance with the laws, it shall, within three months from the date of the announcement of the grant of the patent, award to the inventor or creator of a service invention-creation a sum of money as prize. The sum of money prize for a design patent shall not be less than RMB 1,500 Yuan.
Where an invention-creation is made on the basis of an inventor's or creator's proposal adopted by the entity to which he belongs, the entity shall award to him or her a money prize on favorable terms.
Where the entity has not entered into a contract with the inventor or creator on the manner and amount of the remuneration as above mentioned, nor has the entity provided it in its rules and regulations in accordance with the laws, it shall award the inventor or creator a reasonable reward in accordance with the Law of the People's Republic of China on Promoting the Transformation of Scientific and Technological Achievements.
The state encourages the entities to implement incentives and adopt methods such as equity, stock options, dividends, etc., to ensure that inventors or creators receive a fair share of the innovation benefits.
Right to apply for a patent
For a service intention-creation, the right to apply for a patent belongs to the entity. After the application is approved, the entity shall be the patentee.
The entity may dispose of its right to apply for a patent and its patent for its service invention-creation in accordance with the law, and promote the implementation and use of the related invention-creation.
For a non-service invention-creation, the right to apply for a patent belongs to the designer. After the application is approved, the designer shall be the patentee.
In respect of an invention-creation made by a person using the material and technical means of an entity to which he belongs, where the entity and the designer have entered into an agreement on the right to apply for and own a patent, such agreement shall prevail.
For an invention-creation jointly made by two or more entities or individuals, or made by an entity or individual in execution of a commission given to it or him by another entity or individual, the right to apply for a patent belongs, unless otherwise agreed upon, to the entity or individual that made, or to the entities or individuals that jointly made, the invention-creation. After the application is approved, the entity or individual that applied for it shall be the patentee.
Co-ownership
Where the co-owners of a patent application or a patent have concluded an agreement on the exercising of the right, the agreement shall prevail.
In the absence of such agreement, any co-owner may independently exploit the patent or license another party to exploit the patent through non-exclusive license; any fee for the exploitation obtained from licensing others to exploit the patent shall be distributed among the co-owners.
Except for the circumstances as provided in the preceding paragraphs, a jointly-owned patent application or patent shall be exercised with the consent of all co-owners.
Basic Principles of Application
Applying for patents shall follow the principle of good faith. Patent applications shall be filed on the basis of genuine invention-creation activities, and no fraud is allowed.
For any identical invention-creation, only one patent shall be granted.
Where two or more applicants file applications for patent for the identical invention-creation, the patent shall be granted to the applicant whose application was filed first. (first-to-file rule)
Two or more applicants who respectively file, on the same day (referring to the date of filing or the priority date where priority is claimed), patent applications for the identical invention-creation, shall, after receipt of a notification from the CNIPA, hold consultations among themselves to determine the applicant(s).
Where any foreigner, foreign enterprise or other foreign organization having no habitual residence or business office in China files an application for a patent in China, the application shall be treated under this Law in accordance with any agreement concluded between the country to which the applicant belongs and China, or in accordance with any international treaty to which both countries are party, or on the basis of the principle of reciprocity.
After a patent application is submitted, the type of patent application cannot be changed. For example, an invention patent application can only be an invention patent application in subsequent procedures, reexamination procedures or divisional application procedures, and cannot be changed to a utility model patent application.
Unity
An application for a patent for design shall be limited to one design. Two or more similar designs for the same product or two or more designs which are incorporated in products belonging to the same class and sold or used in sets may be filed as one application.
Where two or more similar designs of the same product are filed in one application, the other designs of the product shall be similar to the main design indicated in the brief specification. The number of similar designs contained in a design patent application shall not exceed 10.
The two or more designs belonging to the same class and sold or used in sets mean that, each product incorporating the design belongs to the same class in the classification of products and is customarily sold or used at the same time, and the designs incorporated in each product have the same concept of design.
Divisional Applications
Where a patent application contains two or more designs, the applicant may file a divisional application:
(1) before the expiration of two months from the date of receipt of the allowance notice;
(2) before the expiration of three months from the date of receiving the final rejection decision against which the applicant decides not to request re-examination;
(3) before the expiration of three months from the date of receiving the affirmed rejection re-examination decision made by the CNIPA against which the applicant decides not to institute an administrative lawsuit;
(4) before the effective date of the Court’s final ruling that affirms the rejection decision of the CNIPA in the administrative lawsuit instituted by the applicant; or
(5) before the effective date when the application was withdrawn, or was deemed as having been withdrawn and was not revived.
However, where a patent application has been rejected, withdrawn or is deemed to have been withdrawn, no divisional application may be filed.
The divisional application may not change the type of the initial application.
A divisional application shall be entitled to the filing date and, if priority is claimed, the priority date of the initial application, provided that the divisional application does not go beyond the scope of disclosure contained in the initial application.
If an already-filed divisional application has received a lack of unity objection from the CNIPA, the applicant will obtain the chance to file an additional divisional application based on this already-filed divisional application within a specific timeline which is the same as above items (1)-(5).
After the expiration of those time limits, no divisional application can be filed based on the already-filed divisional application which has received a lack of unity objection.
Applications Required Confidentiality
Where a patent application relates to the interests of national defense and is required to be kept secret, the patent application shall be filed with and examined by the national defense intellectual property office. Where a patent application received by the CNIPA relates to the interests of national defense and is required to be kept secret, the application shall be promptly forwarded to the national defense intellectual property office to carry out the examination. Where it is found after examination by the national defense intellectual property office there is no cause for rejection of the application, the CNIPA shall make a decision to grant the national defense patent.
Assignment of a Patent Application
The right of patent application may be assigned.
Where the right of patent application is assigned, the parties shall conclude a written contract and register it with the CNIPA. The CNIPA shall announce the registration.
The assignment shall take effect as of the date of registration.
Patent Agency for Patent Applications
Where any foreigner, foreign enterprise or other foreign organization having no habitual residence or business office in China applies for a patent, or has other patent matters to attend to, in China, it or he shall appoint a legally incorporated patent agency to act as its or his agency.
Where any Chinese entity or individual applies for a patent or has other patent matters to attend to in the country, it or he may appoint a legally incorporated patent agency to act as its or his agency.
What is Unpatentable
No patent shall be granted
No patent shall be granted for any invention-creation that is contrary to the laws or social morality or that is detrimental to public interest. Any invention-creation that is contrary to the laws shall not include the invention-creation merely because the exploitation of which is prohibited by the laws.
Unpatentable subject matters
For the following, no patent shall be granted:
designs of two-dimensional printing goods, made of the pattern, the colour or the combination of the two, which serve mainly as indicators.
Requirements for granting a patent for design
Any design for which a patent may be granted shall not be a prior design, nor has any entity or individual filed before the date of filing with the CNIPA an application relating to the identical design disclosed in patent documents announced after the date of filing.
Any design for which a patent may be granted shall significantly differ from prior design or combination of prior design features.
Any design for which a patent may be granted must not be in conflict with the legitimate right obtained before the date of filing by any other person.
The prior design referred to herein means any design known to the public before the date of filing in China or abroad.
Priority
Where, within six months from the date on which any applicant first filed in a foreign country an application for a patent for design, he or it files in China an application for a patent for the same subject matter, he or it may, in accordance with any agreement concluded between the foreign country and China, or in accordance with any international treaty to which both countries are party, or on the basis of the principle of mutual recognition of the right of priority, enjoy a right of priority.
Where, within six months from the date on which any applicant first filed in China an application for a patent for design, he or it files with the CNIPA an application for a patent for the same subject matter, he or it may enjoy a right of priority.
Any applicant who claims the right of priority for a design patent shall make a written declaration when the application is filed, and submit, within three months, a copy of the patent application document which was first filed.
If the applicant fails to make the written declaration or to meet the time limit for submitting the copy of the patent application document, the claim to the right of priority shall be deemed not to have been made.
Where the name or title of the applicant who claims the right of priority is not the same as the one recorded in the copy of the earlier application, the applicant shall submit document certifying the assignment of right of priority. If no such document is submitted, the right of priority shall be deemed not to have been claimed.
An applicant may claim one or more priorities for a patent application; where multiple priorities are claimed, the priority period for the application shall be calculated from the earliest priority date.
Domestic Priority - Further Circumstances
When filing a design application, the applicant may claim the domestic priority right of an earlier invention or a utility model application for the same subject matter as the design shown in the drawings.
A later application may not claim domestic priority of an earlier application if the subject matter of the earlier application falls under any of the following:
(1) where it has claimed foreign or domestic priority;
(2) where it has been granted a patent;
(3) where it is a divisional application filed as prescribed.
Where the domestic priority is claimed, the earlier application shall be deemed to be withdrawn from the date on which the later application is filed, except where the application for a design patent claims an invention or a utility model patent application as the basis for domestic priority.
Novelty grace period
An invention-creation for which a patent is applied for does not lose its novelty where, within six months before the date of filing, one of the following events occurred:
(1) where it was first made public for the purpose of public interest when a state of emergency or an extraordinary situation occurs in the country;
(2) where it was first exhibited at an international exhibition sponsored or recognized by the Chinese Government;
(3) where it was first made public at a prescribed academic or technological meeting;
(4) where it was disclosed by any person without the consent of the applicant.
The international exhibition recognized by the Chinese Government means the international exhibition that is registered with or recognized by the International Exhibitions Bureau as stipulated by the International Exhibitions Convention.
The academic or technological meeting means any academic or technological meeting organized by a competent department concerned of the State Council or by a national academic or technological association, as well as any academic or technological meeting organized by an international organization recognized by a competent department concerned of the State Council.
For the situation in the above item (2) or (3), the applicant shall, when filing the application, make a declaration and, within two months from the date of filing, submit certifying documents stating the fact that the invention-creation was exhibited or published and with the date of its exhibition or publication.
For the situation in the above item (1) or (4), the CNIPA may, when it deems necessary, require the applicant to submit the relevant certifying documents within the specified time limit.
Patent application documents
For filing an application for a patent for design, a request, drawings or photographs of the design and a brief specification of the design shall be submitted.
Drawings/photographs
The relevant drawings or photographs submitted by the applicant shall clearly indicate the design of the product for which patent protection is sought.
Where a partial design patent application is filed, the applicant shall submit views of the entire product and indicate the content of the claimed part using a combination of broken and solid lines or other methods.
Where the applicant seeks protection of colors, drawings or photographs in color shall be submitted.
Brief Specification
The brief specification shall indicate the title and the use of the product incorporating the design, the essential feature(s) of the design, and designate a drawing or photograph capable of best showing the essential feature(s) of the design. Where a view of the product incorporating the design is omitted or where concurrent protection for color is claimed, it shall be indicated in the brief specification.
Where a design patent application is filed for two or more similar designs incorporated in the same product, one of these designs shall be indicated as the basic design in the brief specification.
Where a partial design patent application is filed, the claimed part shall be specified in the brief description, except when the claimed part has been indicated by a combination of broken and solid lines in the views of the entire product.
The brief specification shall not contain any commercial advertising and shall not be used to indicate the function of the product.
Regarding the class to which that product incorporating the design belongs, the applicant shall refer to the classification of products for designs published by the CNIPA.
Date of filing, Application Date
The date on which the CNIPA receives the application shall be the date of filing. If the application is sent by mail, the date of mailing indicated by the postmark shall be the date of filing.
Withdrawal of applications
An applicant may withdraw his or its application for a patent at any time before the patent is granted.
When withdrawing a patent application, the applicant shall submit to the CNIPA a declaration stating the title of the invention-creation, the application number and the date of filing.
Where a declaration to withdraw a patent application is submitted after the preparations for the publication of the application document has been completed by the CNIPA, the application document shall be published as scheduled. However, the declaration withdrawing the patent application shall be published in the subsequent issue of the Patent Gazette.
Amending application documents
An applicant may amend his or its application for a patent, but the amendment to the application for a patent for design may not go beyond the scope of the disclosure as shown in the initial drawings or photographs.
Examination procedures
Filing receipt
Where an application for a patent for design submitted to the CNIPA meets the requirements for filing, the CNIPA will issue a filing receipt.
Voluntary amendments
Within two months from the date of filing, the applicant for a design patent may amend the design application on his or her or its own initiative.
Where the applicant amends the application documents after receiving a notification of office action issued by the CNIPA, he or she or it shall make the amendment directed to the defects pointed out by the notification.
Preliminary examination
If upon preliminary examination the CNIPA finds the application not to be in conformity with the related requirements, it will notify the applicant of its opinions and request him or her or it to state his or her or its observations or to rectify the application within the specified time limit. If the applicant fails to make any response within the specified time limit, the application shall be deemed to have been withdrawn.
Where, after the applicant has made his or her or its observations or the rectification, the CNIPA still finds that the application is not in conformity with the related provisions, the application shall be rejected.
Allowance Notice
Where it is found after preliminary examination that there is no cause for rejection of the application for a patent for design, the CNIPA shall issue an allowance notice/notification to grant a patent for design.
Registration and Announcement
After the CNIPA issues the allowance notice/notification to grant a patent, the applicant shall go through the formalities for registering a patent grant within two months from the date of receipt of the notification.
If the applicant completes the formalities of registration within the time limit, the CNIPA shall make a decision to grant a patent, issue the patent certificate, and announce it.
If the applicant does not go through the formalities of registration within the time limit, he or she or it shall be deemed to have abandoned his or her or its right to obtain the patent.
The patent for design shall take effect as of the date of the announcement.
The CNIPA shall correct promptly the mistakes in the patent announcements and patent pamphlets once they are discovered, and the corrections shall be announced.
Evaluation Reports
The applicant may request the CNIPA to make an evaluation report of patent at the time of going through the formalities of patent registration.
After the announcement of the decision to grant a design patent, the patentee, the interested party, the accused infringer may request the CNIPA to make an evaluation report of patent.
The CNIPA shall make a patent evaluation report within two months from receiving of the request for the patent evaluation report, while if the applicant requests a patent evaluation report at the time of going through the formalities of patent registration, the CNIPA shall make the patent evaluation report within two months from the date of the announcement of the grant of the patent.
Where two or more persons request for patent evaluation reports in respect of a same design patent, the CNIPA shall make one evaluation report only.
Any entity or individual may view or copy the patent evaluation report.
Reexamination
Where an applicant for patent is not satisfied with the decision of the CNIPA rejecting the application, the applicant may, within three months from the date of receipt of the decision, request the CNIPA to make a reexamination, via filing a request for reexamination, stating the reasons and, when necessary, attaching the relevant supporting documents.
The petitioner/applicant may amend the patent application when requesting reexamination or making responses to the notification of reexamination of the CNIPA. But the amendments shall be limited only to remove the defects pointed out in the rejection decision or in the notification of reexamination.
Where, after reexamination, the CNIPA finds that the request does not comply with relevant provisions or that the patent application otherwise obviously violates the relevant provisions, it shall request the petitioner/applicant to submit the observations within a specified time limit. If no response is made within the time limit, the reexamination request shall be deemed to have been withdrawn. Where, after the petitioner/applicant has made the observations or amendments, the CNIPA still finds that the request does not comply with the relevant provisions, it shall make a reexamination decision to affirm the rejection.
Where, after reexamination, the CNIPA finds that the rejection decision does not comply with the relevant provisions, or that the amended application has removed the defects as pointed out by the rejection decision, it shall make a reexamination decision to revoke the rejection decision, and continue the examination procedure.
Where the applicant is not satisfied with the reexamination decision of the CNIPA, it or he may, within three months from the date of receipt of the notification, institute legal proceedings in the people's court.
Withdrawal of Reexamination Request
At any time before the CNIPA makes its reexamination decision, the petitioner/applicant may withdraw its or his or her reexamination request.
Where the petitioner/applicant withdraws its or his or her reexamination request before the CNIPA makes its decision, the procedure of reexamination is terminated.
Stay or Suspension
Any party involving in a dispute over the ownership of the right of patent application or patent, who has already applied for mediation with the administrative authority for patent affairs or instituted legal proceedings before the people's court, may request the CNIPA to stay/suspend the relevant procedures.
Where the CNIPA finds that the reasons for suspension submitted by the requesting party are obviously untenable, it may not suspend the relevant procedures.
After entering into force of the mediation made by the administrative authority for patent affairs or the judgment rendered by the people's court, the parties concerned shall request the CNIPA to resume the suspended procedure. If, within one year from the date when the request for suspension is filed, no decision is made on the dispute relating to the ownership of the right to apply for a patent or the patent, and it is necessary to continue the suspension, the party who made the request shall, within the time limit, request to extend the suspension. If, at the expiration of the time limit, no such request for extension is filed, the CNIPA shall resume the procedure on its own initiative.
Where, in the trial of civil cases, the people's court has ordered the adoption of preservation measures on the right of patent application or patent, the CNIPA shall suspend the relevant procedure concerning the patent application or patent under preservation on the date of receiving the judgment order and the notification on assisting the execution of the order indicated with the application number or the patent number. At the expiration of the time limit for preservation, if there is no order of the people's court to continue the preservation, the CNIPA shall resume the relevant procedure on its own initiative.
The suspension of relevant procedures by the CNIPA refers to the suspension of such procedures as preliminary examination, substantive examination, reexamination of a patent application, granting of patent and the announcement of invalidation of patent; the suspension of the procedures on handling the abandonment of patent, changing or transferring patent or right of patent application, pledge of patent and the cessation of patent before the expiration of its duration.
Patent Invalidation
Where, starting from the date of the announcement of the grant of the patent by the CNIPA, any entity or individual considers that the grant of the patent is not in conformity with the relevant provisions of the Patent Law, it or he may request the CNIPA to declare the patent invalid. The request for invalidation shall state in detail the grounds for invalidation, making reference to all the evidence as submitted, and indicate the piece of evidence on which each ground is based.
After a request for invalidation is accepted by the CNIPA, the petitioner may add reasons or supplement evidence within one month from the date of filing the invalidation request. Additional reasons or evidence submitted after the specified time limit may be disregarded by the CNIPA.
The CNIPA shall send a copy of the invalidation request for the patent and copies of the relevant documents to the patentee and invite it or him or her to present its or his or her observations within a specified time limit. The patentee and the petitioner shall, within the specified time limit, make responses to the notification concerning transmitted documents or the notification concerning the examination of the invalidation request sent by the CNIPA. Where no response is made within the specified time limit, the examination of the CNIPA will not be affected.
In the course of the examination of a invalidation request, the time limit specified by the CNIPA shall not be extended.
Invalidation Grounds
For the invalidation request, one of the following grounds may be used:
- the designs do not belong to the definition of design pursuant to the Patent Law;
- the inventions-creation is contrary to laws, social morality or is detrimental to public interests;
- unpatentable subject matters (e.g. designs of two-dimensional printing goods…);
- double patenting;
- the principle of good faith was not followed in the patent application; for instance, the patent application is not based on genuine invention-creation activities, and the applicant practices fraud;
- the design is a prior design or a conflicting application or lacks obviousness in view of the prior design or combination of prior design features;
- the design conflicts with the legal rights acquired by others before the filing date;
- the relevant drawings or photographs submitted do not clearly indicate the design of the product for which patent protection is sought;
- the amendment to a design patent application goes beyond the scope of the disclosure as shown in the initial drawings or photographs; or
- the divisional application goes beyond the scope recorded in the initial application.
Res judicata
Where, after a decision on any request for invalidation of the patent is made, invalidation based on the same reasons and evidence is requested once again, the CNIPA shall refuse to accept it.
Voluntary Amendments
The patentee for the design patent concerned may not amend the drawings, photographs or the brief specification of the design.
Oral Hearing
The CNIPA may, at the request of the parties concerned or in accordance with the needs of the case, decide to hold an oral hearing in respect of a request for invalidation.
Where the CNIPA decides to hold an oral hearing in respect of a request for invalidation, it will send notifications to the parties concerned, indicating the date and place of the oral hearing to be held. The parties concerned will make response to the notification within the time limit specified in the notification.
Where the petitioner fails to make response to the notification of the oral hearing sent by the CNIPA within the specified time limit, and fails to take part in the oral hearing, the request for invalidation shall be deemed to have been withdrawn. Where the patentee fails to take part in the oral procedure, the CNIPA may proceed to examine by default.
Withdrawal of Invalidation Request
The invalidation petitioner may withdraw the request before the CNIPA makes a decision on it.
Where the petitioner withdraws the request or where the request for invalidation is deemed to have been withdrawn before the CNIPA makes a decision, the examination for the invalidation request is terminated.
Where, based on the examination work it has done, the CNIPA finds that it is able to make a decision of invalidation or invalidation in part of the patent, the examination procedure shall not be terminated.
Settlement
In the invalidation proceedings, one party has the right to settle with the other party on their own. Settlement is a voluntary procedure, but not a mandatory procedure.
Recusal
The parties or other interested parties may request an examiner to recuse if they find that the examiner has certain relationship with the case or the parties that affects the fairness of the examination and trial.
Involving Ownership Dispute
Where a patent at issue in the invalidation proceedings involves a dispute over ownership, a party of the dispute case may request to participate in invalidation proceedings. If requesting to participate in the invalidation proceedings, the party of the dispute case shall file a request for participating with documents certifying that the ownership dispute case has been accepted by the court or the local intellectual property administrative department. In the invalidation proceedings, the party of the dispute case can file his/her/its opinion for the Panel’s reference.
Involving Early Resolution of Drug Patent Disputes
The petitioner shall clearly indicate that the case involves the mechanism for early resolution of drug patent disputes in the Request for Invalidation or shall file relevant evidence showing that the invalidation involves the mechanism for early resolution of drug patent disputes in time.
Decision for Invalidation Proceedings
The CNIPA shall examine the request for invalidation of the patent promptly, make a decision on it and notify the petitioner and the patentee.
The decision for invalidation request, either declaring the patent invalid or upholding the patent, shall be registered and announced by the CNIPA.
Where the patentee or the petitioner is not satisfied with the decision of the CNIPA declaring the patent invalid or upholding the patent, such party may, within three months from receipt of the notification of the decision, institute legal proceedings in the people's court.
Validity of a Patent Invalidation Decision
Any patent which has been declared invalid shall be deemed to be non-existent from the beginning.
The decision declaring the patent invalid shall have no retroactive effect on any judgment or mediation decision of patent infringement which has been pronounced and enforced by the people's court, on any decision concerning the handling of a dispute over patent infringement which has been complied with or compulsorily executed, or on any contract of patent license or of assignment of patent which has been performed prior to the declaration of the patent invalid.
However, the damage caused to other persons in bad faith on the part of the patentee shall be compensated.
If not returning of the monetary damage for patent infringement, the fees for exploitation of the patent or fees for the assignment of the patent, pursuant to the above provisions, is obviously contrary to the principle of equity, all or part of the preceding damage or fees shall be returned.
Patent Rights
After the grant of a patent for design, no entity or individual may, without the authorization of the patentee, exploit the patent, that is, make, offer to sell, sell or import the product incorporating its or his patented design, for production or business purposes.
Other Rights and Obligations
The patentee shall pay an annual fee beginning with the year in which the patent was granted.
The patentee has the right to affix a patent indication on the patented product or on the package of that product. Making the affixation should be in the manner as prescribed by the CNIPA
Exercising patent rights shall follow the principle of good faith.
The patent rights shall not be abused to harm public interests or the legitimate rights and interests of others.
Where any abuse of patent rights, exclusion or restriction of competition constitutes monopolistic behavior, the Anti-Monopoly Law shall apply.
Term of a Patent
The term of patent for designs shall be fifteen years, counted from the date of filing.
Termination of Patents
In any of the following cases, the patent shall terminate before the expiration of its duration:
(1) where an annual fee is not paid as prescribed;
(2) where the patentee abandons his or its patent by a written declaration.
Any termination of the patent shall be registered and announced by the CNIPA.
Patent Assignment
A patent may be assigned.
Where a patent is assigned, the parties shall conclude a written contract and register it with the CNIPA. The CNIPA shall announce the registration.
Except for the assignment of the patent, where the patent is transferred because of any other reason (e.g. inheritance), the party concerned shall, accompanied by relevant certified documents or legal papers, request the CNIPA to register the change in the owner of the patent.
The patent assignment or transfer shall take effect as of the date of registration.
Patent Licensing
Any entity or individual exploiting the patent of another shall conclude with the patentee a license contract for exploitation and pay the patentee a fee for the exploitation of the patent, patent exploitation fees or royalties.
The licensee has no right to authorize any entity or individual, other than that referred to in the contract, to exploit the patent.
Any license contract for exploitation of a patent which has been concluded by the patentee with an entity or individual shall, within three months from the date of entry into force of the contract, be submitted to the CNIPA for recording.
Open License
Basic Principle
Where the patentee voluntarily declares in writing to the CNIPA that he/it is willing to license any entity or individual to exploit his/its patent and specifies the payment method and standard of the royalty, the CNIPA shall make an announcement and implement open licensing.
Where the open license declaration is made for a design patent, a patent evaluation report shall be provided.
The content of an open license declaration shall be accurate, clear and shall not contain commercial advertising.
During the implementation period of the open license, the patent annual fee paid by the patentee shall be reduced or exempted accordingly.
Any patentee shall not, by means of providing false materials or concealing facts, make open license declarations or obtain annuity reductions during the open license implementation period.
Non-applicable
Where any patent falls under any of the following circumstances, the patentee shall not implement open license for the patent:
1) the patent is within the validity term of an exclusive or sole license;
2) the patent is involved in suspension due to disputes over patent application rights or patent ownership, or preservation measures in civil cases;
3) the annuity is not paid as required;
4) the patent is pledged, and the consent of the pledgee is not obtained; or
5) other circumstances that hinder the effective exploitation of the patent.
Withdrawal
Where the patentee withdraws the open license declaration, it shall be submitted in writing and be announced by the CNIPA. Where the open license declaration is withdrawn by announcement, the validity of the open license granted earlier shall not be affected.
Procedures
Any entity or individual who wishes to exploit an open-licensed patent may notify the patentee in writing and pay the exploitation fee or royalty in accordance with the announced method and standard for royalty payment to obtain a patent license.
Where a patent license is granted via open license, the patentee or the licensee shall record the license with the CNIPA based on written documents that can sufficiently prove the grant of the license.
Types
The patentee who implements open licensing may grant a general license after negotiating with the licensee on exploitation fee or royalty, but may not grant an exclusive or a sole license for the patent.
Disputes
Where the parties have disputes over the implementation of an open license, the parties may resolve through negotiation; where the parties are unwilling to negotiate or the negotiation fails, they may request the CNIPA for mediation or institute legal proceedings in the people's court.
Pledge
Where any patent is pledged, both the pledger and the pledgee shall jointly register the contract of pledge with the CNIPA.
Patent Protection
After the grant of the patent for design, no entity or individual may, without the authorization of the patentee, exploit the patent, that is, make, offer to sell, sell or import the product incorporating its or his patented design, for production or business purposes.
The scope of protection of the patent for design shall be determined by the design of the product as shown in the drawings or photographs. The brief specification may be used to interpret the design of the product as shown in the drawings or photographs.
Where a dispute arises as a result of the exploitation of a patent without the authorization of the patentee, that is, the infringement of the patent of the patentee, it shall be settled through consultation by the parties. Where the parties are not willing to consult with each other or where the consultation fails, the patentee or any interested party may institute legal proceedings in the people's court, or request the administrative authority for patent affairs to handle the matter.
Where any infringement dispute relates to a patent for design, the people's court or the administrative authority for patent affairs may ask the patentee or any interested party to furnish an evaluation report of patent made by the CNIPA after having conducted search, analysis and evaluation of the relevant design, and use it as evidence for trying or handling the patent infringement dispute; the patentee or interested party or the accused infringer may also initiatively furnish a patent evaluation report.
Prescriptive period for instituting legal proceedings concerning the infringement of patent is three years counted from the date on which the patentee or any interested party obtains or should have obtained knowledge of the infringing act.
For details on judicial and administrative remedies, please refer to "Outline of CN Patent System II: Patent Protection".
Principles for Administration
The CNIPA shall handle any patent application and patent-related request according to law and in conformity with the requirements of being objective, fair, accurate and timely.
The CNIPA shall strengthen the construction of a patent information public service system, release patent information in a complete, accurate, and timely manner, provide basic patent data, publish patent gazette on a regular basis, and promote the dissemination and utilization of patent information.
Integrity
The administrative authority for patent affairs may not take part in recommending any patented product for sale to the public or any such commercial activities. Where the administrative authority for patent affairs violates the provisions of the preceding paragraph, it shall be ordered by the authority at the next higher level or the supervisory authority to correct its mistakes and eliminate the bad effects. The illegal earnings, if any, shall be confiscated. Where the circumstances are serious, the persons who are directly in charge and other persons who are directly responsible shall be given sanction in accordance with law.
Where any State functionary working for patent administration or any other State functionary concerned neglects his duty, abuses his power, or engages in malpractice for personal gain, which constitutes a crime, shall be prosecuted for his criminal liability in accordance with law. If the case is not serious enough to constitute a crime, he shall be given sanction in accordance with law.
Recusal
Where any of the following events occurs, any examiner who conducts examination in the procedures of preliminary examination, substantive examination, reexamination or invalidation shall, on his or her own initiative or upon the request of the parties concerned or any other interested person, be recused from exercising his or her function:
(1) where he or she is a near relative of the party concerned or the agent of the party concerned;
(2) where he or she has an interest in the patent application or the patent at issue;
(3) where he or she has any other kinds of relations with the party concerned or with the agent of the party concerned that may influence impartial examination;
(4) in reexamination or invalidation proceedings, where he or she has taken part in the examination of the same application.
Confidentiality
Until the publication or announcement of a patent application, staff members and other persons involved of the CNIPA have the duty to keep its contents confidential.
Dates, Time Limits and Revival/Restoration
Date of Filing
Where any document is sent by mail to the CNIPA, the date of mailing indicated by the postmark on the envelope shall be deemed to be the date of filing; where the date of mailing indicated by the postmark on the envelope is illegible, the date on which the CNIPA receives the document shall be the date of filing, except where the date of mailing is proved by the party concerned.
Where various documents are submitted in electronic form to the CNIPA, the date on which the documents enter the specific electronic system designated by the CNIPA shall be the date of filing.
Date of Receipt
Where any document is sent by mail by the CNIPA, the 15th day from the date of mailing shall be presumed to be the date on which the party concerned receives the document. Where the party concerned provides evidence proving the date of actual receipt of the documents, the date of actual receipt shall prevail.
Where any document is delivered personally in accordance with the provisions of the CNIPA, the date of delivery is the date on which the party concerned receives the document.
Where the address of any document is not clear and it cannot be sent by mail, the document may be served by making an announcement. At the expiration of one month from the date of the announcement, the document shall be deemed to have been served.
For various documents served in electronic form by the CNIPA, the date on which they enter the electronic system recognized by the party concerned shall be the date of service.
Time Limits
The date on which the time limit prescribed in the Patent Law and its Implementing Regulations begins shall not be counted in the time limit, and the calculation shall start from the next day.
Where the time limit is counted by year or by month, it shall expire on the corresponding day of the last month; if there is no corresponding day in that month, the time limit shall expire on the last day of that month; if a time limit expires on an official holiday, it shall expire on the first working day following that official holiday.
Revival or Restoration
Force Majeure: Where a time limit prescribed in the Patent Law or these Implementing Regulations or specified by the CNIPA is not observed by a party concerned because of force majeure, resulting in loss of his or her or its rights, he or she or it may, within two months from the date on which the impediment is removed and within two years immediately following the expiration of that time limit request the CNIPA to restore his or her or its rights.
Other Justified Reasons: Where a time limit prescribed in the Patent Law or its Implementing Regulations or specified by the CNIPA is not observed by a party concerned because of any other justified reason except for force majeure, resulting in loss of his or her or its rights, he or she or it may, within two months from the date of receipt of a notification from the CNIPA, request the CNIPA to restore his or her or its rights. However, where the time limit for requesting reexamination is not observed, he/she/it may, within two months from the expiration of the time limit for requesting reexamination, request the CNIPA to restore his/her/its rights.
Where requesting to restore his or her or its right due to the situations of the above two paragraphs, he or she or it shall submit a request for restoration of his or her or its right, stating the reasons, attaching, if necessary, the relevant certifying documents, pay official fees, and go through the relevant formalities which should have been complied with before the loss of his or her or its right.
Where the party concerned makes a request for an extension of a time limit specified by the CNIPA, he or she or it shall, before the time limit expires, file a request for extension of time limit, state the reasons to the CNIPA and go through the relevant formalities.
Not-allowed Revival or Restoration
The following time limit is not allowed to revive or restore:
(1) six months for novelty grace period;
(2) six months for claiming a priority of design patent application;
(3) fifteen years of design patent term; and
(4) three years of prescriptive period for instituting legal proceedings concerning the infringement of patent.
Files and Patent Register
The CNIPA shall keep a Patent Register in which the registration of the following matters relating to patent application or patent shall be made:
(1) any grant of the patent;
(2) any transfer of the right of patent application or the patent;
(3) any pledge of the patent, preservation and release thereof;
(4) any patent license contract recorded;
(5) any declassification of national defense patents or secret patents;
(6) any declaration of patent invalidation;
(7) any termination of patent;
(8) any restoration of patent;
(9) any compensation for patent term;
(10) any open license for patent exploitation;
(11) any compulsory license for patent exploitation;
(12) any change in the name or title, nationality and address of the patentee.
Review/copy Files and Register
Any person may, after approval by the CNIPA, consult or copy the files of the published or announced patent applications and the Patent Register.
Any person may request the CNIPA to issue a copy of extracts from the Patent Register.
File Preservation
The files of the patent applications which have been withdrawn or deemed to be withdrawn or which have been rejected, shall not be preserved after expiration of two years from the date on which the applications cease to be valid.
Where the patent has been abandoned, wholly invalidated or terminated, the files shall not be preserved after expiration of three years from the date on which the patent ceases to be valid.
Patent Gazette
The CNIPA shall publish the Patent Gazette at regular intervals, publishing or announcing the following:
(1) the bibliographic data and the abstract of the description of an invention patent application;
(2) any request for substantive examination of an invention patent application and any decision made by the CNIPA to conduct on its own initiative the substantive examination of an invention patent application;
(3) any rejection, withdrawal, deemed withdrawal, deemed abandonment, restoration and transfer of an invention patent application after its publication;
(4) any grant of patent and the bibliographic data of the patent;
(5) the abstract of the description of a utility model patent, one drawing or photograph of a design patent;
(6) any declassification of national defense patent or secret patent;
(7) any declaration of patent invalidation;
(8) any termination or restoration of patent;
(9) any compensation for patent term
(10) any transfer of patent;
(11) any recordal of patent license contract;
(12) any pledge of patent, preservation and the release thereof;
(13) any matter related to patent open license;
(14) any grant of patent compulsory license;
(15) any change in the name or title, nationality and address of the patentee;
(16) any service of documents by way of making an announcement;
(17) any correction made by the CNIPA; and
(18) any other related matters.
Official Fees
When any person files a patent application with, or has other formalities to go through at, the CNIPA, he or she or it shall pay the following fees:
(1) filing fee, additional fee for filing an application, printing fee for publishing the application, and fee for claiming priority;
(2) fee for substantive examination for an invention patent application, and reexamination fee;
(3) annual fee;
(4) fee for requesting restoration of right, and fee for requesting extension of time limit;
(5) fee for making a change in the bibliographic data, fee for requesting for evaluation report of patent, and fee for requesting for patent invalidation, fee for certifying a copy of patent documents.
The applicant shall pay the filing fee, the printing fee for the publication of the application and the necessary additional fee for filing an application within two months from the filing date or fifteen days from the receiving date of filing receipt of the application. If the fees are not paid or not paid in full within the time limit, the application shall be deemed to be withdrawn.
Where claiming priority, the applicant shall pay the fee for claiming priority at the same time with the payment of the filing fee. If the fee is not paid or not paid in full within the time limit, the claim for priority shall be deemed not to have been made.
For a request for substantive examination or a reexamination, the relevant fee shall be paid within the time limit as prescribed respectively by related regulations. If the fee is not paid or not paid in full within the time limit, the request is deemed not to have been made.
When going through the formalities of registration of the grant of patent, the applicant shall pay the annual fee of the year in which the patent is granted. If such fees are not paid or not paid in full within the time limit, the registration of the grant of patent shall be deemed not to have been made.
The annual fee of the patent after the year in which the patent is granted shall be paid before the expiration of the preceding year. If the patentee fails to pay or pay in full the fee, the CNIPA shall notify the patentee to pay the fee or to make up the insufficiency within six months from the expiration of the time limit within which the annual fee is due to be paid, and at the same time pay a surcharge. The amount of the surcharge shall be, for each month of late payment, 5% of the whole amount of the annual fee of the year within which the annual fee is due to be paid. Where the fee and the surcharge are not paid within the time limit, the patent shall terminate from the expiration of the time limit within which the annual fee should be paid.
Where having difficulties in paying the various official fees prescribed, any applicant or patentee may, in accordance with the prescriptions, submit a request for fee reduction to the CNIPA.
If you have any question about the protection of intellectual property rights, please feel free to send us emails. For patent-related matters, please send to info@afdip.com. For trademark/litigation/legal matters, please send to info@bhtdlaw.com.
