The draft of the third amendments to the Patent
Law was submitted to the State Council for review in December 2006.
The Patent Law in effective was promulgated on April 1, 1985 and was
amended two times in 1992 and 2000 respectively. According to the
State Intellectual Property Office, the prospective goal is that the
third amendments will come into effect in 2008.
1. Requirements on Novelty
Articles 22 and 23 of the current Patent Law prescribe different territorial
scopes of the prior art and the prior design of different categories:
the prior art and the prior design that are publicly disclosed in
the form of publications is worldwide; the prior art and the prior
design that are publicly disclosed via public use or any other means
is merely limited in the country. The draft amendments eliminate territorial
limitation of the prior art and the prior design and adopt the general
absolute novelty requirement in the world, and add definitions of
the prior art and the prior design to the Patent Law.
2. Ownership of the Patent Right Obtained from a Scientific Research
Project with Government Investments
As for the patent right obtained from a scientific research project
funded with government investments, the patent right belongs to the
entity which undertakes the project, except for the right which relates
to the security or other vital interests of the State. After the patent
right is granted to the application, the relative departments of the
State Council, all the localities and departments concerned may foster
the spreading and application of the patent within the approved scope.
3. Revoking the Designation of Foreign-Related Patent Agencies
The current Patent Law prescribes that when Chinese applicants file
patent applicants in foreign countries or foreign applicants file
patent applications in China, they shall appoint a designated foreign-related
patent agency. The draft amendments revoke the abovementioned provisions.
Therefore, when foreign applicants file patent applications in China,
they may appoint a patent agency which is founded by law. When Chinese
applicants file patent applications in foreign countries, they may
decide whether to appoint a domestic patent agency.
4. Protecting the Genetic Resources and Disclosure Requirements
thereof
The draft amendments propose that where the completion of an invention-creation
depends on genetic resources, the applicant shall disclose the source
of said genetic resources in the description. Otherwise, the invention
will not be granted.
5. Patent System for Designs
As for the patent right for design, the amendments propose the following
changes in the five aspects:
a. Restricting the Scope of the Object of a Granted Design
A pattern design of a printed matter serving as a sign does not help
propel innovation of designs of products per se. Therefore, any design
of the pattern or the color, or their combination of a two-dimensional
printed matter, which merely functions as a sign, is excluded from
the scope of the object for which a patent right for design may be
granted.
b. Improving the Substantive Requirements for Granting
The draft amendments raise up the substantive requirements for granting
the patent right for design. The granted design shall have obvious
distinction, compared with prior design or the combination of the
features of prior design. In addition, the draft amendments add provisions
on conflicting applications for designs.
c. Associated Designs
In light of the provisions of the current Patent Law, the designs
similar to the basic design in practice may not be granted. If a design
application comprises a plurality of designs similar to the basic
design, the application will be rejected as it does not comply with
the requirement on unity of Article 31 of the Patent Law. If the applicant
files and seeks to protect a plurality of applications which are similar
to the basic design respectively, the applications will also be rejected
for not complying with the provisions of Rule 13(1) of the Implementing
Regulations of the Patent Law which requires "for any identical invention-creation,
only one patent right shall be granted". In the draft amendments,
the filing of a consolidated application for the patent right for
design comprising associated designs is allowed in order to provide
ample protection for the designs similar to the basic design.
d. Search Report of Designs
As provided in the current Patent Law, merely preliminary examination
is required for an application for design and no substantive examination
will be carried out. Therefore, the legal definiteness and right stability
of the patent right for design is relatively weak. For a patent for
utility model and a patent for design, the draft amendments prescribe
that where a patentee exercise its or his right and bring dispute
lawsuit, it or he shall furnish to the relative legal departments
or the patent administrative department a search report of the utility
model or design.
e. Protection Scope of Designs
It is provided in Article 56, paragraph 2 of the current Patent Law
that the extent of protection of the patent right for design shall
be determined by the product incorporating the patented design as
shown in the drawings or photographs. In order to facilitate the determination
of the protection scope of the patent right for design, the draft
amendments prescribe that a brief explanation of the design may be
used to interpret the drawings or photographs and the application
documents for a design patent shall include a brief explanation of
the design.
6. Protection for Patent Right
a. Offering to Sell the Product Incorporating its or his Patented
Design
The provisions that no entity or individual may, without the authorization
of the patentee, offer to sell the product incorporating its or his
patented design are not set under the current Patent Law. In order
to protect the legal rights of the patentee, the draft amendments
prescribe that no entity or individual may, without the authorization
of the patentee, offer to sell the product incorporating its or his
patented design.
b. Adding Provisions on Pre-Trail Evidence Preservation
Under the current Patent Law, there are provisions on ordering the
suspension of infringement before legal proceedings and pre-trail
property preservation; however, there are not any provisions on pre-trail
evidence preservation. The draft amendments add provisions on preservation
of evidence before litigation.
c. Provisions on Legal Compensations
According to the WTO's relevant preventions, such as the TRIPs, the
draft amendments prescribe that the legal compensation shall include
the reasonable expense the patentee has incurred in order to stop
the infringement.
d. Provisions on Means for Investigating and Evidence Collecting
In order to further strengthen the means for investigating and evidence
collecting in patent administrative enforcement and performing sound
administrative, the draft amendments provide necessary means for patent
administrative departments in dealing with patent infringements and
passing off.
7. Compulsory License for Exploitation of Patent
The draft amendments include significant revisions to compulsory licenses.
According to it, compulsory licenses may be applied in the case of
a national emergency or public interest. The draft amendments stipulate
that public health crises caused by epidemic diseases constitute a
national emergency, and the prevention of epidemic diseases, control
of the spread of epidemic diseases and treatment of patients with
epidemic diseases all fall under the banner of public interest.
The occurrence or propagation of an epidemic disease that causes public
health crisis constitutes a national emergency, a compulsory license
shall be granted by law to produce a drug to meet the needs of the
public.
8. Provisions on the Prior Art Defense and Stopping Accusation in
Bad Fait
If there is any evidence may prove the implemented technology or design
is of prior art or prior design, falling into the public domain in
which it may use freely, the people's court may determine that the
implemented technology or design does not constitute infringement.
In addition, where the patentee is fully aware that the technology
or design for which a patent right has been granted belongs to prior
art or prior design but institutes legal proceedings in the people's
court , the accused infringer may request the people's court to order
the patentee to compensate for the damage thus caused to the accused
infringer.
9. Prescription for Instituting Legal Proceedings
Prescription for instituting legal proceedings concerning the infringement
of patent right is two years counted from the date on which the patentee
or any interested party obtains or shall have obtained knowledge of
the infringing act. Where the right owner brings the lawsuit beyond
the prescription of two year but the infringement continues as of
the initiation of the lawsuit, the compensation amount for the infringement
damage shall be calculated from two years before the date on which
the patentee brings the lawsuit to the people's court, and the people's
court shall order the defendant to cease the infringement.
In addition, where the patentee or any interested party who does not
claim its or his right in the form of acquiescence makes the entity
or individual of exploiting its or his patent have reason believe
that it or he will not claim the right against the exploiting of its
or his patent, and subsequently institutes the infringement lawsuit
before the court, or asks the patent administrative authority to handle
the disputes, it or he shall has no right to obtain compensation or
to ask the court to order the said entity or individual to cease the
exploitation, as the claim of the right contravenes the principle
of good faith and the principle of fairness.
10. Patent Right Co-Owners
The draft amendments set clear definition between rights and obligations
of the co-owners of the patent right, the right to apply for a patent
or the patent application. As for the patent right co-owners, assigning
the patent right, pledging the patent right or licensing others to
exploit the patent shall be consented by all co-owners, unless agreed
upon otherwise. Any co-owner may exploit the patent alone without
the consent of all other co-owners, unless agreed upon otherwise.
11. First Application
When filing an application in a foreign country for a patent for invention-creation
made in China, the applicant shall file first an application for patent
with the State Intellectual Property Office. The draft amendments
further stipulate that where any entity or individual, without the
approval of the State Intellectual Property Office, files directly
in a foreign country an application for a patent for invention-creation
that is completed in China, no patent right shall be granted for the
patent application for said invention-creation filed in China by it
or him.
