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Patent regulation development Patent regulation development promotes information spread promotes information spread

and applicationand application

September, 2011 September, 2011

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Birth and development of patent regulationsBirth and development of patent regulations

The gestation, birth and development of Chinese patent regulations are The gestation, birth and development of Chinese patent regulations are closely connected with reform and opening-up. Experiences of more than 30 closely connected with reform and opening-up. Experiences of more than 30 years witnessed achievements of reform and opening-up from the planned years witnessed achievements of reform and opening-up from the planned economy to the market economy.economy to the market economy.

– Enact and implementation of the Law of Patent of Enact and implementation of the Law of Patent of

PRC(hereinafter referred to as “the Law of Patent”)PRC(hereinafter referred to as “the Law of Patent”) Passed in the fourth session of the 6Passed in the fourth session of the 6thth NPC Standing Committee on March, NPC Standing Committee on March,

12, 1984, and implemented from April, 1, 1985. 12, 1984, and implemented from April, 1, 1985.

– The first amendment of the Law of PatentThe first amendment of the Law of Patent Passed in the 27Passed in the 27thth session of the 7 session of the 7thth NPC Standing Committee on Sept. 4, 1992, NPC Standing Committee on Sept. 4, 1992,

and implemented from Jan. 1, 1993.and implemented from Jan. 1, 1993.

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– The second amendment of the Law of PatentThe second amendment of the Law of Patent Passed in the 17Passed in the 17thth session of the 9 session of the 9thth NPC Standing Committee on Aug. 25, NPC Standing Committee on Aug. 25,

2000, and implemented from Jul. 1, 2001.2000, and implemented from Jul. 1, 2001.

– The Third amendment of the Law of PatentThe Third amendment of the Law of Patent Passed in the 6Passed in the 6thth session of the 11 session of the 11thth NPC Standing Committee on Dec. 27, NPC Standing Committee on Dec. 27,

2008, and implemented from Oct. 1, 2009.2008, and implemented from Oct. 1, 2009.

The State Council announced the decision of regulations of implementing the The State Council announced the decision of regulations of implementing the

amendment of the Law of Patent on Jan. 9, 2010, and the decision was amendment of the Law of Patent on Jan. 9, 2010, and the decision was

implemented from Feb. 1, 2010.implemented from Feb. 1, 2010.

State Bureau of Intellectual Property has enacted a series of departmental State Bureau of Intellectual Property has enacted a series of departmental

regulations such as transitional measures and guides to amendment examination.regulations such as transitional measures and guides to amendment examination.

Birth and development of patent regulationsBirth and development of patent regulations

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The basic tenet of patent regulations is to encourage invention and innovation, The basic tenet of patent regulations is to encourage invention and innovation, promote new technology application, and promote economic and social promote new technology application, and promote economic and social development.development.

2 basic functions:2 basic functions: Grant the innovator protection of his monopolyGrant the innovator protection of his monopoly Promote spread and application of patent informationPromote spread and application of patent information

Categories of patent: invention, practical model, appearance designCategories of patent: invention, practical model, appearance design Examination regulations:Examination regulations:

Invention---initial examination + substantive examination, Invention---initial examination + substantive examination, invalidation after authorizationinvalidation after authorization

Practical model and appearance design---initial examination, Practical model and appearance design---initial examination, invalidation after authorization and patent assessment report.invalidation after authorization and patent assessment report.

Birth and development of patent regulationsBirth and development of patent regulations

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Protective regulations:Protective regulations: Administrative enforcement---local bureaus of intellectual property Administrative enforcement---local bureaus of intellectual property

investigate and deal with fake and inferior products, settle tort investigate and deal with fake and inferior products, settle tort disputes and mediate right disputes.disputes and mediate right disputes.

Judicial trialJudicial trial---administrative proceedings, common pleas---administrative proceedings, common pleas Spread and application of patent informationSpread and application of patent information

Patent communiqué, patent registration and public information Patent communiqué, patent registration and public information serviceservice

Specialized information serviceSpecialized information service– Upgrade starting points of innovation, decrease duplicative R&D, and Upgrade starting points of innovation, decrease duplicative R&D, and

prevent from pirating others’ patentsprevent from pirating others’ patents

Birth and development of patent regulationsBirth and development of patent regulations

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Major task of the 3Major task of the 3rdrd amendment of the Law of Patent: amendment of the Law of Patent:– Clarify right ascription, encourage enthusiasm of invention and Clarify right ascription, encourage enthusiasm of invention and

innovation, and promote implementation and application of patent innovation, and promote implementation and application of patent technology;technology;

– Be strict with conditions of patent authorization, improve patent Be strict with conditions of patent authorization, improve patent qualities, and upgrade stability of patent;qualities, and upgrade stability of patent;

– Deal with the interest conflicts between the public and patentees Deal with the interest conflicts between the public and patentees reasonably, and prevent abuse of patent;reasonably, and prevent abuse of patent;

– Improve judicial and administrative enforcement measures, and Improve judicial and administrative enforcement measures, and strengthen protection of patent.strengthen protection of patent.

Birth and development of patent regulationsBirth and development of patent regulations

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Contents of the amendments of the Law of PatentContents of the amendments of the Law of Patent

1.Clarify patent ascription and corresponding rights and 1.Clarify patent ascription and corresponding rights and obligationsobligations– Exertion and exercise of common patent ( article 15)Exertion and exercise of common patent ( article 15)

Principle of the priority status of contractsPrinciple of the priority status of contracts Exclusive of other promises, it must be agreed by the whole part Exclusive of other promises, it must be agreed by the whole part

owners to deal with common rights, i.e. to transfer rights of patent owners to deal with common rights, i.e. to transfer rights of patent application, withdraw or transfer patent application, transfer or application, withdraw or transfer patent application, transfer or give up patent, grant the others utilize the patent solely or give up patent, grant the others utilize the patent solely or exclusively;exclusively;

Exclusive of other promises, any part owner can grant the others Exclusive of other promises, any part owner can grant the others utilize his/her patents separately or in common permission.utilize his/her patents separately or in common permission.

Having granted the others utilize, the fee shall be distributed among Having granted the others utilize, the fee shall be distributed among the part owners.the part owners.

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2. Improve conditions of patent authorization2. Improve conditions of patent authorization– Absolute novelty (Article 22)Absolute novelty (Article 22)

Published, used publically, and known by the public in other Published, used publically, and known by the public in other

ways both domestically and overseasways both domestically and overseas

Inimical application by oneselfInimical application by oneself

Present technical conceptPresent technical concept

– Protection and resource disclosure of genetic resources ( article 5, 26)Protection and resource disclosure of genetic resources ( article 5, 26)

Inventions will not be granted patent if their success relies on Inventions will not be granted patent if their success relies on

genetic resources, and acquisition or utilization of the geneticgenetic resources, and acquisition or utilization of the genetic Applicants shall disclosure direct and original resources of Applicants shall disclosure direct and original resources of

genetic resources in their application documents.genetic resources in their application documents.

Contents of the amendments of the Law of PatentContents of the amendments of the Law of Patent

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3. Improve regulations as to appearance design3. Improve regulations as to appearance design

– Properly limit the object sphere of appearance design patent, to Properly limit the object sphere of appearance design patent, to

improve quality of the applicationsimprove quality of the applications The designs of patterns, colors or the combination, whose major The designs of patterns, colors or the combination, whose major

function is to be a mark, will not be granted patent (article 25)function is to be a mark, will not be granted patent (article 25)

– Upgrade substantive conditions of granting appearance design patent Upgrade substantive conditions of granting appearance design patent

(article 23) (article 23) Absolute novelty, inimical applicationAbsolute novelty, inimical application Present design conceptPresent design concept

Add up requirements of creativeness—clearly different from Add up requirements of creativeness—clearly different from

present designs or their combination of characteristicspresent designs or their combination of characteristics

Contents of the amendments of the Law of PatentContents of the amendments of the Law of Patent

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– Allow application of “similar appearance design” in one case (article 31)Allow application of “similar appearance design” in one case (article 31) – Briefing to the design becomes necessary application document (article Briefing to the design becomes necessary application document (article

27)27)

– Further clarify the criteria of judging protection sphere of appearance Further clarify the criteria of judging protection sphere of appearance

design patent (article 59)design patent (article 59) Briefings and pictures can explain pictures or photos.Briefings and pictures can explain pictures or photos.

– Set up the regulation of appearance design patent assessment report Set up the regulation of appearance design patent assessment report

(article 61)(article 61)

Contents of the amendments of the Law of PatentContents of the amendments of the Law of Patent

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4. Protect public rights and interests, to prevent abuse of patent4. Protect public rights and interests, to prevent abuse of patent– Improve regulations as to compulsive permission, to promote patent applicationImprove regulations as to compulsive permission, to promote patent application

Based upon applications from the units or personnel who possess the Based upon applications from the units or personnel who possess the conditions of utilizing the patent, they can be bestowed the compulsive conditions of utilizing the patent, they can be bestowed the compulsive permission to utilize the patent. permission to utilize the patent.

– Link up with the Law of anti-monopolization---patentees’ activities of Link up with the Law of anti-monopolization---patentees’ activities of exerting their patent can be decided as monopolization by judicial exerting their patent can be decided as monopolization by judicial procedures or administrative procedures, to eliminate or decrease procedures or administrative procedures, to eliminate or decrease their unfavorable impacts on business competition.their unfavorable impacts on business competition.

– Patentees don’t exert or don’t take full advantages of their patents Patentees don’t exert or don’t take full advantages of their patents without reasonable reasons.without reasonable reasons.

Compulsive permission of public health and medicine patent---permit Compulsive permission of public health and medicine patent---permit export of medicines made upon compulsive permission in regulated export of medicines made upon compulsive permission in regulated conditions, in accordance with resolutions relative of public health of Doha conditions, in accordance with resolutions relative of public health of Doha Announcement (article 50)Announcement (article 50)

Contents of the amendments of the Law of PatentContents of the amendments of the Law of Patent

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– Add up exceptional regulations of tort disputes as to medicine or Add up exceptional regulations of tort disputes as to medicine or

medical appliances patent (article 69) medical appliances patent (article 69)

Manufacture, use and import patent medicine or medical appliances Manufacture, use and import patent medicine or medical appliances

exclusively to acquire the information for administrative exclusively to acquire the information for administrative

examination and approval, including the others’ manufacture and examination and approval, including the others’ manufacture and

import for him.import for him.

– Add up regulations of present technology demur (article 62) Add up regulations of present technology demur (article 62)

In the course of tort pleas, if the defendant can testify that the In the course of tort pleas, if the defendant can testify that the

applied technology is present technology or design, People’s court applied technology is present technology or design, People’s court

shall decide that his activities don’t belong to tort.shall decide that his activities don’t belong to tort.

Contents of the amendments of the Law of PatentContents of the amendments of the Law of Patent

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5. Improve enforce measures to strengthen protection of patent5. Improve enforce measures to strengthen protection of patent – Regulations of clarifying compensation amount of tort (article 65)Regulations of clarifying compensation amount of tort (article 65)

• Legal compensation amountLegal compensation amount

• Reasonable expense of patentees to prevent tort activitiesReasonable expense of patentees to prevent tort activities

– Add up regulations of evidence protection prior to the lawsuit Add up regulations of evidence protection prior to the lawsuit

(article 67)(article 67)• Application of the partyApplication of the party

• Judgment made with 48 hoursJudgment made with 48 hours

• Evidence protective measures should be eliminated if the Evidence protective measures should be eliminated if the

applicant don’t go to court within 15 days from the date of applicant don’t go to court within 15 days from the date of

taking the measures.taking the measures.

Contents of the amendments of the Law of PatentContents of the amendments of the Law of Patent

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– Add up regulations of methods of investigation and Add up regulations of methods of investigation and

acquiring evidence by administrative enforcement bodies acquiring evidence by administrative enforcement bodies

(article 64) (article 64)

• Inquiry and investigate relative thingsInquiry and investigate relative things

• Carry out field inspection on suspicious sitesCarry out field inspection on suspicious sites

• Consult and copy materials such as contract, invoice, Consult and copy materials such as contract, invoice,

account book, etc.account book, etc.

• Inspect relative productsInspect relative products• Seal up or seize fake or inferior patent productsSeal up or seize fake or inferior patent products

– Strengthen protection of appearance design patentStrengthen protection of appearance design patent

• Promise salePromise sale

Contents of the amendments of the Law of PatentContents of the amendments of the Law of Patent

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6. Deepen reform of administrative examination and approval, build 6. Deepen reform of administrative examination and approval, build up a government of serviceup a government of service

– Abrogate appointment of agencies of dealing with foreign affairs( Abrogate appointment of agencies of dealing with foreign affairs( Article 19)Article 19)

– Abrogate the provision that Chinese must entrust Chinese agent Abrogate the provision that Chinese must entrust Chinese agent to apply for patent overseas(Article 20)to apply for patent overseas(Article 20)

– Augment obligations of administrative departments of patent to Augment obligations of administrative departments of patent to spread patent information(article 21) spread patent information(article 21)

• State Bureau of Intellectual Property shall release patent State Bureau of Intellectual Property shall release patent intact precise and timely information, and issue patent intact precise and timely information, and issue patent communiqués periodically.communiqués periodically.

Contents of the amendments of the Law of PatentContents of the amendments of the Law of Patent

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