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The Chinese Legislature approved a number of amendments to the Chinese Patent Law on December 29, 2008, resulting in the third revision of the Law. The revisions dealt with changes to patent application filing, criteria for granting patents, protection of patent rights, and compulsory licensing.
Offering to Sell Products Incorporating Patented Designs
Revised Article 11, Paragraph 2:
"After the grant of the patent right for a design, no entity or individual may, without the authorization of the patentee, exploit the patent, that is, make, offer to sell, sell or import the product incorporating its or his patented design, for production or business purposes".
"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. The brief description may be used to interpret the product protected by design patent shown in the drawings or photographs".
"Where the patent infringement relates to a patent for utility model or design, the people's court or the administrative authority for patent affairs may ask the patentee or an interested party to furnish an evaluation report of patent right made by the Patent Administration Department Under the State Council.
The Patent Administrative Department Under the State Council shall, upon the request from patentee or interested party, conduct a search, analysis and evaluation for the related patent for utility model or patent for design to make an evaluation report of paten right. The evaluation report of paten right is a preliminary evidence for people's court or administrative authority for patent affairs to judge the validity of the patent right".
"In a patent infringement dispute, where the accused infringer has evidences demonstrating that the technology or design exploited by it or him belongs to prior art or prior design, the said exploiting act shall not be constituting an infringing act".
Eret C. McNichols
Maier & Maier, PLLC
Real World v. Patent World
Legend has it that long ago King Hiero II was given a golden crown that was made by a local goldsmith. The King was leery of the goldsmith's honesty and tasked Archimedes to determine the authenticity of the golden crown. Archimedes had to accomplish this task without damaging the crown in any way. He was fraught with anxiety on how to determine the authenticity with out damaging the King's new gift. To ease his nerves one night, Archimedes took a hot bath. As he stepped into the tub he noticed the water level rise, spilling some on the floor. Instantly, he realized that the water rose by an amount that was equal to the volume of his body. Archimedes knew that without damaging the crown he could use the volume and the weight of the crown to determine what whether it was a fake and made of mere silver or authentic and made of pure gold. He was so excited he ran through the streets, dripping wet and naked, shouting "Eureka!" which means "I have found it!"
This anecdote teaches us that conception is the foundation of innovation. Nearly every free thinking person that has both an imagination and an inquisitive mind has conceived of at least one idea. Conception is that "eureka moment" when the solution to a problem becomes instantly clear.
As any inventor knows, the real world and the patent world are mutually exclusive. For example, an inventor may invent a widget that does something or makes a task easier. That inventor may build and use the widget to improve her own way of life. In such an example, her widget is so useful that her neighbors want one for themselves, so being the good neighbor she builds each of them one. As the idea catches on and the orders come in, our inventor realizes that she could sell these widgets to offset her time spent building them, which she does. But a person in the next county begins building the widgets at a faster pace and selling them for a lower price. Naturally, our inventor cries "no fair."
The moment an inventor desires to profit off of their idea or prevent others from making it, they enter the patent world. This is a world full of mundane details, antiquated language and strict timelines. The line between an inventor maintaining their rights in their invention and losing them is as this as a knife's edge.
There are many important steps that inventors and small companies must know to successfully maintain their rights in their invention. Below is a Top Ten Pitfalls list of the most common mistakes every inventor or small company should avoid during the patent process.
(i) whether the Claims and Continuation Final Rules fall within the scope of the USPTO's rulemaking authority and
(ii) whether the Final Rules are contrary to the Patent Act. The Court concluded that the Final Rules were all within the agency's rulemaking authority.
Previously in this topic: Third revision of China's Patent Law -- Patent Application Filing
Absolute Novelty
Revised Article 23:
"Any invention or utility model for which patent right may be granted must possess novelty, inventiveness and practical applicability.
Novelty means that, the invention or utility model shall neither belong to the prior art, nor has any other person filed before the date of filing with the Patent Administrative Department Under the State Council an application which described the identical invention or utility model and was published in patent application documents or announced in patent documents after the said date of filing.
Inventiveness means that, as compared with the prior art, the invention has prominent substantive features and represents a notable progress and that the utility model has substantive features and represents progress.
Practical applicability means that the invention or utility model can be made or used and can produce effective results.
The prior art referred to in this Law means any technology known to the public in this country or abroad before the date of filing".
In the revised patent law, the definition of "prior art" is broadened to include public use or other means of disclosure outside China. In the previous Chinese patent law, disclosure of an invention to the public by means other than publication (such as, for example, use, sale or display) did not constitute a novelty bar.
"Any design for which patent right may be granted shall neither belong to the prior design, nor has any other person filed before the date of filing with the Patent Administrative Department Under the State Council an application which described the identical design and was announced in patent documents after the said date of filing.
Any design for which patent right may be granted shall be obviously differentiable from the prior design or a combination of features of the prior design.
Any design for which patent right may be granted must not be in conflict with any prior right of any other person.
The prior design referred to in this Law means any design known to the public in this country or abroad before the date of filing".
In the revised patent law, an inventive step is now added to the novelty analysis for design patents. Furthermore, the definition of "prior design" is added, covering all disclosed designs in China and abroad.
"For any of the following, no patent right shall be granted:
(6) Two-dimensional designs made of patterns, colors or their combination, for the purpose of indication".
Under the new patent law, two-dimensional designs such as labels, or having labeling as their primary function will no longer be granted protection.
"No patent right shall be granted for an invention-creation of which the completion depends on genetic resources, but the acquisition or exploitation of said genetic resources violates the relevant laws and administrative regulations of the State".
"For an invention-creation, the completion of which depends on genetic resources, the applicant shall indicate the direct source and original source of said genetic resources in the application documents; The applicant shall state reasons if the original source of said genetic resources can not be indicated".
"For any identical invention-creation, only one patent right shall be granted. However, where the same applicant(s) had applied for both patent for utility model and patent for invention for the identical invention-creation on the same day, and the previously granted patent for utility model has not been expired, and the applicant(s) declares to abandon the patent for utility model, then the patent for invention may be granted".
"Where the patent application right or patent right is co-owned by two or more entities or individuals, if the co-owners have agreed upon how to exploit the patent, such agreement shall be followed; otherwise, any co-owner may exploit the patent alone or grant others an non-exclusive license to exploit the patent and the exploitation fee received shall be allocated among all co-owners.
Except as provided above in the preceding paragraph, exploitation of any co-owned patent application right or patent right shall obtain all co-owners' consent".
"Any entity or individual may file an application in a foreign country for an invention-creation completed in China, subject to a prior security/secrecy examination by the Patent Administration Department Under the State Council".
"An application for a patent for design shall be limited to one design. Two or more similar designs for the same product or two or more designs which are incorporated in products belonging to the same class and are sold or used in sets may be filed as one application".
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