CNIPA Promulgates Interim Measures for Implementation of the Amended Patent Law during the Transitional Period

The newly amended China Patent Law has been effective since June 1, 2021. In view of the fact that the Implementation Rules concerning the law in effect have not yet been finalized, on May 25, 2021, the CNIPA promulgated certain Interim Measures (CNIPA Order No. 423) to cope with the implementation of the law on the effective date. The Interim Measures will be enforced until the Implementation Rules of the Patent Law are released and effectuated. Here is a summary of items for attention during the transitional period.

1.      Design Patents

The amended Patent Law extended the term of design protection to 15 years, and introduced eligibility to file for partial designs. However, as a principle of the safeguarding of trust, the newly effective statutory laws are not retroactive. Only design applications filed after June 1^st, 2021 will enjoy a term of protection of 15 years. In the meantime, partial design applications received after June 1^st, 2021 will only be docketed; they will not be examined until the Implementation Rules have come into effect.

Additionally, the Patent Law amendment made it possible to claim domestic priority for design applications. However, a new design application filed after June 1^st, 2021 claiming priority of an earlier Chinese (domestic) design application will be subject to examination only after the Implementation Rules have been promulgated.

2.      Patent Term Adjustment (PTA)

The purpose of the PTA is to make up for the delay in examination time attributable to CNIPA. To benefit from the PTA, the patentee whose patent was granted after June 1^st, 2021 needs to submit a request in printed form within three (3) months of the patent being granted. CNIPA will examine the request once the Implementation Rules are in place.

3.      Patent Term Extension (PTE)

The purpose of the PTE is to make up for the period of time when a patent cannot be enforced due to a regulatory review for the market approval of a new drug requiring a patent. To benefit from the PTE, the patentee needs to submit a request in paper form within three (3) months of the granting of the drug’s market approval. CNIPA will examine the request once the Implementation Rules are in place.

4.      Open license

Any patentee who wishes to grant a license to any interested party or individual, in order to allow them to exploit the patent within a set of standard conditions, may submit a request in printed form. CNIPA will examine the request once the Implementation Rules have been enforced.

5.      Patent Evaluation Report

A person accused of patent infringement may voluntarily request a patent evaluation report for the disputed utility model or design patent. To do so, said accused infringer may submit a request in paper form during the transitional period. CNIPA will examine the request once the Implementation Rules have come into effect.

6.      New Circumstances for Novelty Loss Exemption during Grace Period

The amended Patent Law has added an “eligible event” to allow for the exemption of any loss of novelty occurring within the six(6)-month grace period before an invention application is filed. An invention will not lose its novelty if its first disclosure occurs owing to the public interest at a time of national or exceptional emergency. An applicant filing an invention application after June 1^st, 2021 may request novelty loss exemption if he or she believes that such an event has taken place.

7.      Due Date for Submission of Priority Documents

The new terms for submission of priority documents stipulated in the amended Patent Law will be applied for applications with priority claims filed after June 1^st, 2021. Therefore, the corresponding due date, namely sixteen(16) months from the earliest filing date of an invention, and three(3) months for a design application, will be determined accordingly.

The Interim Measures are clearly designed to deal with interested applicants or patentees who wish to immediately make use of the new stipulations in the Patent Law. However, CNIPA will not begin to examine or review any new requests or applications until the Implementation Rules have been released and put into operation.

It is worth noting that combating bad faith filing activities has become one of CNIPA’s most high-profile concerns in recent times. The new Patent Law has introduced a bad faith clause, to statutorily curb plagiarism, forging, arbitrary filing, filing of irregularly large quantities of applications, and abuse of rights, among other things. Effective from June 1^st, 2021, this bad faith clause will be officially enforced throughout all stages of patent prosecution.