NEWS

The "Measures on Regulating the Behavior of Patent Applications" (hereinafter referred to as the "Measures") were released by the State Intellectual Property Office Announcement (No. 411) on March 11, 2021. The background and main content of its formulation are now introduced and interpreted.

1. Establishing background and necessity

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, emphasizing the need to strengthen intellectual property protection and improve the quality and efficiency of intellectual property review. Especially in the 25th collective study session of the Political Bureau of the CPC Central Committee in 2020, the General Secretary clearly stated that it is necessary to achieve "transformation from a country that introduces intellectual property rights to a country that creates intellectual property rights, and from pursuing quantity to improving quality." The vigorous development of my country's intellectual property rights industry has provided strong support for the country's economic and social construction. However, at the same time, there have also been various irregular applications that violate the legislative purposes of the patent law, violate the principle of "good faith", and are not aimed at protecting innovation. Patent behavior disrupts the national patent work order.

In order to severely crack down on irregular patent applications and promote the improvement of patent quality from the source, the State Intellectual Property Office has taken a series of measures. In 2007, the State Intellectual Property Office formulated the "Several Provisions on Regulating Patent Application Behavior" (State Intellectual Property Office Order No. 45), which was revised in 2017 and the State Intellectual Property Office Order No. 75 was issued. According to Office Order No. 75, the State Intellectual Property Office investigated and dealt with irregular patent applications from 2018 to 2020. However, recently, some abnormal patent application behaviors have appeared, and the behaviors are diverse and repeated. In order to ensure the realization of the legislative purpose of the patent law to encourage real innovation activities, and to combat and curb various abnormal patent application behaviors that are not aimed at protecting innovation, the State Intellectual Property Office has now formulated and issued the "Measures" as a response to the State Intellectual Property Office's order. The supplement to No. 75 further regulates the behavior of applying for patents.

2. Interpretation of main contents

There are eight articles in the "Measures", which respectively stipulate the basis for formulation, manifestations of abnormal patent applications, review procedures, relief channels, relevant handling measures and implementation dates.

(1) Basis for formulating the Measures

Article 1 of the "Measures" clearly states that "these Measures are formulated in accordance with the Patent Law and its implementation rules, the Patent Agency Regulations and other relevant laws and regulations."Article 1 of the Patent Law clearly states the legislative purpose at the outset, which is to encourage inventions and creations, promote the application of inventions and creations, and improve innovation capabilities; Article 5 stipulates that no patent rights will be granted for inventions and creations that violate the law, social ethics or harm public interests. In addition, Article 7 of the Civil Code stipulates that “civil subjects engaged in civil activities shall abide by the principle of good faith, uphold honesty, and abide by their commitments.” The above provisions provide a clear legal basis for formulating the Measures to combat and deal with abnormal patent applications.

(2) Definition of abnormal patent application behavior

First of all, Article 2, Paragraph 1 of the Measures provides a basic definition of abnormal patent application behavior: any unit or individual, not for the purpose of protecting innovation, not based on real invention and creation activities, for the purpose of seeking illegitimate benefits or Fabricating innovation performance and service performance, submitting various types of patent applications individually or jointly, acting as an agent for patent applications, transferring patent application rights or patent rights, etc. are all abnormal patent application behaviors.

Secondly, Article 2, Paragraph 2 of the Measures provides a non-exhaustive list of manifestations of abnormal patent applications.

1. Regarding “multiple patent applications submitted at the same time or one after another in which the content of inventions and creations are obviously the same, or are essentially formed by simple combinations and changes of features or elements of different inventions and creations.

"Refers to the invention-creation content that is obviously the same or has been formed through simple combination changes to form multiple patent applications, regardless of whether these patent applications are submitted at the same time or successively, including the submission of multiple simple replacements of different materials, components, proportions, components, etc. Or patchwork invention or utility model applications, and also include design applications obtained by simply combining and replacing different design features or elements as they are or with slight changes.

It should be particularly pointed out that “the content of an invention-creation is obviously the same” does not include the situation where the same applicant applies for both a utility model patent and an invention patent for the same invention-creation on the same day as permitted by Article 9, Paragraph 1 of the Patent Law.

2. Regarding “the submitted patent application contains fabrication, forgery or alteration of the invention, experimental data or technical effects, or plagiarism, simple substitution, patchwork of existing technology or existing designs, and other similar situations.

"Fabrication, forgery or alteration" mainly refers to the act of fabricating or forging non-existent inventions, experimental data, technical effects, etc.; or modifying existing technologies or design plans to exaggerate their effects, but the actual Behavior that cannot achieve this effect.

3. Regarding “The invention and creation of the submitted patent application is obviously inconsistent with the actual research and development capabilities and resource conditions of the applicant and inventor.

” Means that the number or content of inventions and creations in the submitted patent application clearly exceeds the actual research and development capabilities and resource conditions of the applicant and inventor.

For example: a company submitted a large number of patent applications in a short period of time, but after verification, it was found that the company had no insured personnel and paid-in capital, and was actually a shell company with no investment in scientific research, no R&D team, and no production and operations.

4. Regarding “The inventions and creations of the multiple patent applications submitted were mainly randomly generated using computer programs or other technologies.

" Refers to the random and disorderly formation of technical solutions or design plans without the actual participation of scientific researchers, which is not a real innovation activity. For example, the contents of many submitted applications are completely randomly generated technical solutions using computer technology. Product shape, pattern or color.

5. Regarding “the invention-creation of the submitted patent application is deliberately formed to avoid the purpose of patentability review, which is obviously inconsistent with technical improvement or design common sense, or has no actual protection value, is deteriorated, piled up, or unnecessarily narrows the scope of protection.” Inventions and creations, or content without any search and examination significance.

”Means that from the perspective of a person skilled in the art, in order to avoid the purpose of patentability review, the applicant deliberately complicates the technical route or design scheme that is conventional in the field or can be realized through simple steps, but the technology is not actually realized. Improvements and design improvements, especially claims formed by enumerating a large number of minor and unnecessary technical features, essentially unnecessarily narrow the scope of protection.

6. Regarding “submitting multiple patent applications that are essentially related to specific units, individuals or addresses in order to avoid regulatory measures to crack down on irregular patent applications.

"Refers to deliberately changing patent applications belonging to the same applicant by registering multiple companies, using multiple ID numbers, or using multiple company addresses in order to avoid being recognized as abnormal patent application behavior." Perform distributed submissions from multiple angles.

7. Regarding "not buying and selling patent application rights or patent rights for the purpose of implementing patented technology, design or other legitimate purposes, or falsely changing the inventor or designer." Mainly includes two situations: First, buying and selling patent applications for non-market competition purposes rights or patents.

For example, an institution or individual transfers patent applications during review or patents after authorization in batches, and the patent applications or patents held by the transferor are not necessarily related to its business operations; or the transferee is obviously not motivated by technical implementation. or other acts of assigning patent applications or patent rights for reasonable legal purposes. The second is the act of falsely changing the inventor or designer. In practice, it has been found that for the purpose of improper profit, a person who has not contributed to the invention is changed to the inventor or designer. Article 13 of the Implementing Rules of the Patent Law stipulates that the inventor or designer should be the inventor or designer of the invention. Substantive characteristics of creation A person who makes a creative contribution.

8. Regarding "Patent agencies, patent attorneys, or other institutions or individuals, acting as agents, inducing, instigating, helping others, or colluding with them to implement various abnormal patent application behaviors."

"Refers to qualified patent agencies, patent agents, and institutions or individuals without patent agency qualifications who implement various abnormal patent application behaviors. This includes the behavior of directly acting as an agent for abnormal patent applications, as well as inducing, instigating, and helping others to file patent applications." Abnormal patent application behavior.

(3) Examination procedures for abnormal patent applications

Article 3 of the "Measures" clarifies the State Intellectual Property Office's special examination procedures for abnormal patent applications, whether during the patent application acceptance, preliminary examination, substantive examination, reexamination procedures, or during the international phase procedures of international applications, or based on If it is reported and initially determined that there is abnormal patent application behavior, the State Intellectual Property Office may, in accordance with these Measures, notify the applicant to voluntarily withdraw the relevant patent application or request for legal procedures within a specified period, or state its opinions. If the applicant is dissatisfied with the preliminary determination, he shall state his opinions and submit sufficient supporting materials within the specified time limit. If you fail to respond within the time limit without justifiable reasons, the relevant patent application will be deemed to have been withdrawn, and the request for relevant legal procedures will be deemed to have not been filed. After the applicant has stated its opinions, if the State Intellectual Property Office still believes that it is an abnormal patent application as described in the "Measures", it will reject the relevant patent application in accordance with the law, or refuse to approve the request for relevant legal procedures.

(4) Relevant legal relief channels

The State Intellectual Property Office will handle abnormal patent applications based on full consideration of relevant evidence and uphold the principles of objective, fair and prudent review.After the applicant has stated its opinions, if the State Intellectual Property Office considers that it is not an abnormal patent application, it will be included in the normal examination procedures and continue to be examined.If citizens, legal persons or other organizations are dissatisfied with the specific administrative actions of the State Intellectual Property Office in handling abnormal patent applications, they may apply for administrative reconsideration to the State Intellectual Property Office in accordance with the relevant provisions of the "Administrative Reconsideration Regulations of the State Intellectual Property Office", or directly apply to the State Intellectual Property Office for administrative review. The People's Court initiated an administrative lawsuit. If a patent applicant is dissatisfied with the State Intellectual Property Office's decision to reject the application, he may request a reexamination from the State Intellectual Property Office in accordance with Article 41 of the Patent Law.

(5) Other measures to deal with abnormal patent applications

The "Measures" clarify the handling measures, as well as handling departments and agencies, for units or individuals that engage in various types of abnormal patent application behaviors at different levels and entities.

Among them: Article 5 clarifies that the All-China Patent Agents Association will take self-regulatory measures for patent agencies or patent attorneys that engage in abnormal patent application behavior as described in Article 2, Paragraph 2, Item (8), and repeat offenders will If the circumstances are serious, the State Intellectual Property Office or the patent management department of the people's government of the province, autonomous region, or municipality directly under the Central Government shall impose penalties in accordance with the provisions of the Patent Agency Regulations and the Patent Agency Management Measures.

For other institutions or individuals who engage in the above-mentioned behaviors and there is evidence to prove that they have conducted patent agency business without authorization, the patent management departments of the people's governments of provinces, autonomous regions, and municipalities directly under the Central Government shall investigate their unqualified patent agency activities in accordance with the provisions of the Patent Agency Regulations punishment. If any clues of other violations of laws and regulations are found, they will be transferred to the relevant departments for processing in accordance with the law.

Articles 4, 6 and 7 of the "Measures" further emphasize the relevant provisions in the State Intellectual Property Office Order No. 75. Applicants who submit abnormal patent applications with serious circumstances will not be allowed to reduce the patent fees. On the basis of requiring back payment, patent fees will not be reduced for all patent applications within five years from the date when the abnormal patent application behavior is determined; for units or individuals that have abnormal patent application behavior, if their behavior is suspected of constituting a patent application under the criminal law, Those who commit crimes shall be transferred to relevant agencies for investigation of criminal liability in accordance with the law.

More intellectual property information and services

Follow the official subscription account of [Shenxin Intellectual Property] on the code

Follow the official service account of [Shentrust Intellectual Property Service Platform] on the code