NEWS

1. Setting the background

In order to ensure the smooth implementation of the revised Patent Law and its implementing rules, clarify the specific rules applicable to the relevant provisions concerning examination business before and after the implementation of the revised Implementing Rules of the Patent Law (hereinafter referred to as the Implementing Rules), At the same time, taking into account the connection with the Interim Measures for the Handling of Relevant Examination Services for the Implementation of the Revised Patent Law (SIPO Announcement No. 510) (hereinafter referred to as Announcement No. 510) and the Interim Measures for the Handling of Relevant Services after Accession to the Hague Agreement (SIPO Announcement No. 511) (hereinafter referred to as Announcement No. 511), The State Intellectual Property Office has drafted the "Transitional Measures on the Handling of Examination Business Related to the Implementation of the Revised Patent Law and Its Implementing Rules" (hereinafter referred to as the "Transitional Measures"), which are hereby promulgated.

2. Main contents

In addition to the applicable principles of Article 1 and the implementation date of Article 17, Articles 2 to 6 mainly involve the rights and obligations of the applicant, and Articles 7 to 16 involve the examination duties of the patent administration department under The State Council.

The Transitional Measures mainly provide for the following:

1. Article 1

This article clarifies the principle provisions on the handling of relevant examination business before and after the Patent Law and its implementing rules come into force, that is, in principle, no retroactivity, and points out that other provisions of these measures will make special provisions on this principle.

2. Article 2

This article specifies the rules applicable to the circumstances relating to the compulsory agency exception. Article 18 of the Rules provides exceptions for compulsory agency in the following cases: First, where an application claims priority, a copy of the prior application document shall be submitted; Second, pay the fee; (3) Other matters prescribed by the patent administration department under The State Council. As of the date of implementation of the Rules, an applicant or patentee who has entrusted a patent agency to apply for a patent or handle other patent matters in China in accordance with the provisions of paragraph 1 of Article 18 of the Patent Law may handle the relevant business on his own in accordance with the provisions of Article 18 of the Rules.

3. Article 3

This article specifies the rules applicable to the restoration, addition or correction of the content of priority. In accordance with the provisions of this Article, from the date of implementation of the Rules, the applicant may, in accordance with the provisions of Article 36 of the revised Rules, request the restoration of the priority; It may, in accordance with the provisions of Article 37 of the Rules, request to increase or correct the priority claim.

4. Article 4

This article expressly refers to the rules applicable to the inclusion of the relevant content. Article 45 of the Rules provides for the invocation of accession, and where the date of first submission of the applicant's patent application is later than the date of implementation of the Rules, the applicant may, in accordance with Article 45 of the Rules, supplement the submission of the documents by invoking the earlier application documents.

5. Article 5

This section specifies the rules applicable to the submission of copies of a subdivision application. Article 49 of the Rules eliminates the requirement of submitting copies of the original application documents and copies of the priority documents when submitting the subcase application. If the date of submitting the subcase application is after the date of implementation of the Rules, the applicant need not submit the relevant copies.

6. Article 6

This article specifies the rules applicable to the entry of the PCT into the national phase procedures and the restoration of priority. Article 121 of the Implementation Rules stipulates the requirements to be met when going through the procedures for entering the Chinese national phase, simplifies the relevant requirements for the submission of the abstract and its accompanying drawings, and the applicant's alteration certification materials, and the applicant shall go through the relevant procedures for entering the Chinese national phase in accordance with the provisions of this article for international applications for inventions and utility models whose entry date is after the date of implementation of the implementation Rules.

Article 128 Where the relevant provisions on the restoration of the priority of international applications for inventions and utility models are added and the expiration date of the period of two months from the date of entry is later than the date of implementation of the Rules, the applicant may request the restoration of the priority in accordance with the provisions of the Article.

7. Article 7

This article specifies the rules applicable to the date of service of documents served in electronic form. Article 4, paragraph 7, of the Rules stipulates that the date on which the patent administration department under The State Council serves various documents in electronic form shall be the date of service upon which they enter the electronic system recognized by the parties concerned. As of the date of implementation of the Rules, the date of service of various documents served by the patent administration department under The State Council in electronic form shall be governed by the provisions of paragraph 7 of Article 4 of the Rules.

8. Article 8

This article specifies the rules applicable to the period of confidentiality review. Article 9 Specifies the time limit for the patent administration department under The State Council to make a notice and decision on confidentiality examination. From the date of implementation of the Rules, the patent administration department under The State Council shall make relevant notices and decisions in accordance with the date specified in Article 9 of the Rules.

9. Article 9

This article specifies the rules applicable to the principle of good faith. Paragraph 1 of Article 20 of the Patent Law stipulates that the principle of good faith shall be followed in applying for a patent. After the revised Patent Law comes into force, that is, from June 1, 2021, the patent administration department under The State Council shall, in accordance with the provisions of this article, examine patent applications in the preliminary examination, substantive examination and reexamination procedures.

Article 11 of the Rules stipulates that patent applications shall follow the principle of good faith. Patent applications of any kind shall be filed on the basis of genuine invention-creation activities and shall not be falsified. At the same time, Article 50 and Article 59 of the Implementing Rules respectively provide for article 11 of the Implementing Rules to be rejected in the first instance and in the actual instance, Article 67 provides for the review procedure, and Article 69 provides for Article 11 of the Implementing Rules to be the reason for the request for invalidation. As of the date of implementation of the Rules, the patent administration department under The State Council shall examine the relevant patent application or patent right in accordance with the provisions of Articles 50, 59, 67 and 69 of the revised Rules.

10. Article 10

This article specifies the rules applicable to applications for partial design patents. As of June 1, 2021, patent applicants may submit, in paper or electronic form, a patent application for a partial design patent seeking protection of a product in accordance with Article 2, paragraph 4, of the Patent Law. Starting from the date of implementation of the Rules, the patent administration department under The State Council shall examine the application for a partial design patent whose date of application is after June 1, 2021, in accordance with Articles 30 and 31 of the revised Rules.

11. Article 11

This article specifies the rules applicable to situations relating to the novelty grace period. Notice No. 510 stipulates that for patent applications filed after June 1, 2021, where the applicant believes that there are circumstances provided for in paragraph 1 of Article 24 of the Patent Law, the request can be made in paper form or electronic form. As of the date of implementation of the Rules, the patent administration department under The State Council shall apply the revised Article 33, paragraph 4, of the Rules to examine the relevant requests made by the applicant.

12. Article 12

This article specifies the rules applicable to the national priority of designs. Notice No. 510 stipulates that for an application for a design patent whose filing date is after June 1, 2021, the applicant may submit a written statement requesting the national priority of a design patent in accordance with the second paragraph of Article 29 of the Patent Law. As of the date of implementation of the Rules, the patent administration department under The State Council shall apply the revised Article 35 of the Rules for examination of an application for a design patent whose date of application is after June 1, 2021.

13. Article 13

This article specifies the rules applicable to the content of patent term compensation. Notice No. 510 provides that for the invention patent authorized by the announcement from June 1, 2021, the patentee may, in accordance with the second paragraph of Article 42 of the Patent Law, submit a request for patent term compensation in the form of paper within three months from the date of the announcement of the patent right authorization, and then pay the relevant fees in accordance with the payment notice issued by the State Intellectual Property Office.

In addition, Announcement No. 510 also provides that, since June 1, 2021, the patentee may, in accordance with Article 42, paragraph 3, of the Patent Law, within three months from the date of approval of the new drug marketing authorization request, submit a patent term compensation request in the form of paper, and then pay the relevant fees in accordance with the payment notice issued by the State Intellectual Property Office.

As of the date of implementation of the Rules, the patent administration department under The State Council shall examine the relevant request in accordance with Articles 77 to 84 of the revised Rules.

Where the time limit of the relevant patent right claimed above expires before the date of implementation of the Rules for implementation, the patent administration department under The State Council, upon examination, deems that the conditions for compensation are met, shall make a decision to grant time limit compensation, and the time limit for compensation shall be calculated from the date of expiration of the original patent right.

The patentee may not be able to pay the fees at the time of filing the request because the fees have not yet been published. Therefore, where a patentee makes a claim for compensation for the term of the patent right in accordance with the second and third paragraphs of Article 42 of the Patent Law before the publication of the fee standards, he may, after the publication of the fee standards, pay the relevant fees referred to in this article within the time limit designated by the patent administration department under The State Council.

14. Article 14

This article specifies the rules applicable to open licenses. Notice No. 510 provides that patentees may voluntarily declare an open license to their patents in paper or electronic form in accordance with Article 50, paragraph 1, of the Patent Law. As of the date of implementation of the Rules, the patent administration department under The State Council shall apply the revised Rules 85 to 88 to examine the declaration made by the patentee for the open license of his or her patent as of June 1, 2021.

15. Article 15

This article specifies the rules applicable to the patent register and the Patent Gazette. Article 106, 107 New registration and announcement of patent right term compensation, open license for patent exploitation and other matters, from the date of implementation of the Rules, the patent administration department under The State Council will apply the provisions of the above provisions of the Rules for registration and announcement of the relevant matters.

16. Article 16

This article specifies the rules applicable to international applications for designs. From 5 May 2022, the applicant may submit an application for the International registration of Industrial designs in accordance with the Hague Agreement on the International Registration of Industrial Designs (1999 text) and Proclamation 511, and from 11 January 2023, The patent Administration Department under The State Council has begun to examine the application for international registration of designs (referred to as the International design Application) for which the international registration date has been determined and China has been designated. As of the date of implementation of the Rules, the patent administration department under The State Council shall examine the relevant international applications for designs in accordance with Articles 136 to 144 of the revised Rules.

17. Article 17

This article specifies the implementation date and the repeal of relevant documents, that is, these measures will come into effect from January 20, 2024, and repeal Announcement 510 and Announcement 511. The relevant contents of Announcement No. 510 and Announcement No. 511 will be stipulated in the revised implementation Rules and patent examination Guidelines.

This article further clarifies that these measures only relate to the transitional application of the Patent Law and its implementing rules and the relevant provisions of patent examination business processing.

Related links: Announcement on the Implementation of the Revised Patent Law and its Implementing Rules Related to the Examination of business handling transitional measures (No. 559)