1. What is the protection period for design patents applied for before May 31, 2021 (including that date)?

Article 93 of the Legislative Law of China stipulates that the laws, administrative regulations, local regulations, autonomous regulations, separate regulations, and rules are not retroactive except special provisions made to better protect the rights and interests of citizens, legal persons, and other organizations. In October 2020, the Standing Committee of the National People's Congress voted to amend the Patent Law. The revised Patent Law did not make special provisions on the issue of retroactivity. Therefore, in accordance with the provisions of the patent law before the amendment, the protection period for design patent applications and patent rights granted before the entry into force of the new Patent Law is ten years.

 

With the development of the industry, product design becomes more refined. It is more and more difficult to innovate the overall design of mature products. Partial design gradually becomes an important manifestation of design innovation. Innovative designers have an increasingly strong demand for protecting partial design patents. Therefore, in response to the demands of innovation entities, the Article 2, paragraph 4 of the revised Patent Law clarifies the patent protection for partial designs of products. Applicants can submit a design patent application for partial design of the product to the China National Intellectual Property Administration (hereinafter referred to as CNIPA) since June,1 2021. However, because the implementation rules of the Patent Law are still in the process of revising and related supporting electronic systems are under development, applicants need to temporarily submit the above partial design patent applications in the form of paper or offline electronic applications since June,1 2021. The Administration will review the above-mentioned applications after the newly revised implementation rules of the Patent Law come into effect.

 

This revision of the Patent Law introduces a domestic design priority system, giving design applicants the opportunity to further improve the application and clarify the scope of protection. Article 29 of the revised Patent Law stipulates that within six months from the date of filing the first design patent application in China, a patent application on the same subject which is filed to the CNIPA can enjoy the right of priority. For the design patent filed after June 1, 2021, the applicant can submit a written statement to the CNIPA, requesting the national priority for the design. However, since the implementation rules of the Patent Law are still in the process of revision, the Administration will examine the above-mentioned applications and the prior design patent applications after the newly revised implementation rules of the Patent Law come into effect.

 

In addition, in order to implement the reform of streamline administration and delegate power, improve regulation, and upgrade services and to give more convenience to applicants, the revision of the Patent Law appropriately adjusted the relevant provisions of the deadline for submission of copies of priority documents. Article 30 of the revised Patent Law stipulates that if an applicant claims priority for a patent for invention or utility model, he or she shall issue a written statement at the time of application and submit the copy of the patent application documents filed for the first time within 16 months from the date of filing the first application. if the applicant claims priority for a design patent, he or she shall issue a written statement at the time of application and submit a copy of the patent application documents filed for the first time within three months. For the patent application filed after June 1, 2021, the applicant can submit a copy of the priority document in accordance with Article 30 of the revised Patent Law.

 

When a state of emergency or extraordinary situation occurs in the country (such as a major epidemic), some inventions and creations need to be put into use immediately in practice to protect the public interest. Because this kind of disclosure does not fall under the exceptions of loss of novelty of the pre-revision Patent Law, they may have the risk of not obtaining patent protection due to loss of novelty. In order to meet the needs of extraordinary situations such as epidemic prevention and control, promote the timely application of these inventions and creations in disease treatment and other aspects, solve public health problems, and respond to the needs of innovative entities to expand exceptions of loss of novelty to better protect inventions and creations, Article 24 of the revised Patent Law adds an exception for loss of novelty. That is, when a state of emergency or extraordinary situation occurs in the country, for the patent filed for application after June 1, 2021 (including that date), which is disclosed for the first time for the purpose of public interest, if the applicant believes it meets the circumstances of Paragraph 1, Article 24 of the revised Patent Law, he or she may submit a request to the CNIPA for loss of novelty grace period. However, since the implementation rules of the Patent Law are still in the process of revising and the relevant supporting electronic systems are under development, applicants can temporarily submit requests in the form of paper since June 1, 2021. The Administration will examine the above-mentioned applications and the prior design patent applications after the newly revised implementation rules of the Patent Law come into effect.

 

Article 93 of the Legislative Law of China stipulates that the laws, administrative regulations, local regulations, autonomous regulations, separate regulations, and rules are not retroactive except special provisions made to better protect the rights and interests of citizens, legal persons, and other organizations. In October 2020, the Standing Committee of the National People's Congress voted to amend the Patent Law. The revised Patent Law did not make special provisions on the issue of retroactivity. Therefore, for invention patents that are announced and authorized before May 31, 2021 (including that date), the patent right period compensation system is not retroactive.

 

As a supporting regulation of the Patent Law, the Implementation Rules of the Patent Law currently being revised have detailed provisions on the relevant content of the patent right period compensation system, including the request time and unreasonable delays caused by the applicant. The draft amendments to the Implementation Rules of the Patent Law have been publicly solicited opinions from the public from November 27, 2020, to January 11, 2021. Based on extensive solicitation of opinions and research, the draft proposes that the patentee should submit the proposal to CNIPA within three months from the date of the authorization announcement.

 

In addition, because the Implementation Rules of the Patent Law are still in the process of revising and related supporting electronic systems are being developed, for invention patents authorized since June 1, 2021, the patentee may temporarily submit a request for compensation for the duration of patent to the CNIPA in the form of paper within three months from the date of the announcement of the patent right authorization. Then the patentee may pay the relevant fees in accordance with the payment notice issued by the Administration. Our Office will examine the above-mentioned request after the newly revised implementation rules of the Patent Law come into effect.

 

Article 93 of the Legislative Law of China stipulates that the laws, administrative regulations, local regulations, autonomous regulations, separate regulations, and rules are not retroactive except special provisions made to better protect the rights and interests of citizens, legal persons, and other organizations. In October 2020, the Standing Committee of the National People's Congress voted to amend the Patent Law. The revised Patent Law did not make special provisions on the issue of retroactivity. Therefore, for new drug-related invention patents that have obtained marketing authorization before May 31, 2021 (including that date), the drug patent right period compensation system is not retroactive.

 

Paragraph 3, Article 42 of the revised Patent Law stipulates that, in order to compensate for the time taken by the new drug marketing review and approval, for the new drug-related invention patents that have been approved for marketing in China, the CNIPA shall grant the patent a right period compensation at the request of the patentee. The compensation period shall not exceed five years, and the total effective patent right period after the new drug is approved for marketing shall not exceed 14 years. As a supporting regulation of the patent law, the Implementation Rules of the Patent Law currently being revised refine the relevant content of the drug patent right period compensation system, including the applicable drugs and patent scope, the calculation method of the compensation period, the scope of protection during the compensation period, and the compensation conditions. Regulation. The draft amendments to the Implementation Rules of the Patent Law have been publicly solicited opinions from the public from November 27, 2020, to January 11, 2021. On the basis of extensive solicitation of opinions and research, the draft proposes to provide compensation period for eligible new drug products, preparation methods, and medical uses related patents. The compensation request shall be sent to the CNIPA within three months from the date of the new drug’s marketing authorization. 

 

As the Implementation Rules of the Patent Law are still in the process of revising and the relevant supporting electronic systems are under development. The patentee can temporarily submit a request to the CNIPA for compensation in the form of paper in accordance with Paragraph 3, Article 42 of the revised Patent Law within three months from the date of approval of the new drug marketing authorization since June 1 202. Then the patentee may pay the relevant fees in accordance with the payment notice issued by the Administration. Our Office will examine the above-mentioned applications after the newly revised implementation rules of the Patent Law come into effect.

 

In order to promote the transformation and application of patents and solve problems such as the asymmetry of supply and demand in patent market, the revision of the Patent Law introduced an open licensing system. Paragraph 1, Article 50 of the revised Patent Law stipulates that if the patentee voluntarily declares in writing form to the CNIPA that he or she is willing to license any entity or individual to exploit his or her patent and clarify the payment method and standard of the license fee, the Administration shall make an announcement and implement an open license. Since June 1, 2021, patentees can voluntarily declare to implement an open license for their patents in accordance with the provisions of paragraph 1, Article 50 of the Patent Law. However, as the Implementation Rules of the Patent Law are still in the process of revising and related supporting electronic systems are under development, patentees can temporarily voluntarily declare open licenses for their patents in paper form since June 1, 2021. The CNIPA will examine the above statement after t the newly revised implementation rules of the Patent Law come into effect.

 

The 2 paragraph, Article 66 of the revised Patent Law stipulates that if a patent infringement dispute involves utility model patents or design patents, the people’s court or the administrative department of patent work may require the patentee or interested parties to issue a patent right evaluation report, which is made by the CNIPA after it searches, analyzes and evaluates related utility models or designs, as the evidence for the trial and handling of patent infringement disputes. Patentees, interested parties, or accused infringers can also proactively issue patent rights evaluation report. This amendment to the Patent Law expands the subjects who can request to issue a patent evaluation report to the accused infringers, which helps them fully assess the risk of infringement and take reasonable countermeasures and help both parties to form a reasonable expectation of the patent right, promoting dispute resolution and reducing the cost of rights protection. Therefore, from June 1, 2021, the accused infringer can request a patent evaluation report. However, as the Implementation Rules of the Patent Law are still in the process of revising and the relevant supporting electronic systems are under development, the accused infringer can temporarily request the CNIPA to issue a patent evaluation report in paper form from June 1, 2021.

 

The principle of good faith is one of the most important basic principles of our civil law. As early as in 1986, Article 4 of the General Principles of the Civil Law stipulates that the civil activities should follow the principles of voluntariness, fairness, compensation for equal value, and good faith. Article 7 of the Civil Code that came into effect from January 1, 2021, stipulates that the Civil entities engaged in civil activities shall follow the principle of good faith, uphold honesty, and abide by their promises. Patent right, as an important civil right, should follow the principle of good faith whether it is applied for a patent or exercised. People cannot obtain patent right through plagiarism, forgery, etc., and cannot abuse the patent right in violation of the principle of good faith. Therefore, Article 1 of the Patent Law clearly states the purpose of the legislation, which is encouraging inventions and creations, promoting the application of inventions and creations, and improving innovation capabilities; Article 5 stipulates that the patents shall not be granted for inventions and creations that violate the law, social morality, or interfere with the public interests. The irregular patent application behavior in patent application not only violates the legislative purpose of the patent law, but also violates the basic principle of good faith in the civil law.

 

The Party Central Committee and the State Council attach great importance to intellectual property work. General Secretary Xi Jinping issued a series of important instructions on intellectual property work, emphasizing the need to strengthen intellectual property protection and improve the quality and efficiency of intellectual property examination. Especially during the 25th collective study session of the Political Bureau of the Central Committee in 2020, the general secretary clearly proposed to realize the transition from a big country in intellectual property in-licensing to a big country in intellectual property creation, and the transition from pursuing quantity to improving quality.

 

In order to severely crack down on irregular patent applications and promote the improvement of patent quality from the source, the CNIPA has adopted a series of measures since 2007. In 2007, the CNIPA issued Bureau Order No. 45, that is the Regulations on Regulating Patent Application Behaviors which regulated irregular patent applications and their handling measures. In 2017, the CNIPA revised the Regulations and issued the Bureau Order No. 75, adding the identification of irregular patent applications and strengthening the handling. According to Bureau Order No. 75, the Administration conducted investigations and treatments on irregular patent applications from 2018 to 2020 and notified local authorities of irregular patent applications that were not intended to protect innovation several times. This revision of the Patent Law adds the principle of good faith, providing a clear and direct legal basis for regulating patent applications at the legal level, which is conducive to improving the quality of patents.

 

The CNIPA resolutely implemented the important instructions of General Secretary Jin Ping on intellectual property work. Since 2021, in order to further regulate patent applications behaviors and intensify the crackdown on irregular patent applications, the Administration has issued the Notice on Further Strict Regulation of Patent Application Behaviors to local intellectual property management departments on January 27 and notified the investigation of irregular patent applications to all localities at the end of February. For applications that have not been actively withdrawn in a timely manner in this and subsequent notifications, the CNIPA will handle them in accordance with the law.  

 

Therefore, since June 1, 2021, the CNIPA will examine patent applications in the process of preliminary examination, substantive examination, and reexamination in accordance with the 1 paragraph, Article 20 of the revised Patent Law.