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.
Below are the revisions to the patent law that deal with changes to patent application filing. Stay tuned to the blog for further updates to this topic.
Disclosure of Genetic Resources
Revised Article 5 paragraph 2:
"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".
Revised Article 27 paragraph 6:
"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 the first time in Chinese patent law history, genetic resource issues are addressed. The origin of a genetic resource must now be disclosed if the completion of an invention relies on the acquisition and exploitation of that resource. The impact of this provision will depend on how "genetic resource" will be defined, and what type of acquisition or exploitation will be deemed illegal.
Double Patenting
Revised Article 9 paragraph 1:
"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".
The previous interpretation of Chinese Patent Law allowed the same applicant to file applications for invention patent and utility model on different days, allowing an applicant to obtain protection for the same invention for longer than 20 years if the applicant abandoned the earlier-filed application. Under the revised law, the same applicant may only file an application for invention patent and utility model on the same date, eliminating the loophole of the previous law.
Co-owner's Right
Revised Article 15:
"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".
Under the revised law, when two or more entities or individuals co-own a patent application or patent, all co-owners must consent to the following acts, unless otherwise agreed:
- assignment of right to apply for a patent;
- assignment or withdrawal of patent application;
- assignment, abandonment or pledge of patent right; and
- license to others to exploit the patent in an excluded way.
Foreign Filing License
Revised Article 21 paragraph 1:
"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".
Under the revised patent law, entities or individuals intending to file a patent application in a foreign country for an invention made in China only need to get approval from SIPO. This revision gives more flexibility to foreign-invested companies in selecting countries when filing patent applications for such inventions. Furthermore, while the current Patent Law limits its first filing requirements for inventions created in China to Chinese entities and individuals, the revised patent law expands the foreign filing license requirements to include foreigners.
Unity of a Design Application
Revised Article 32 paragraph 2 :
"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".
According to the revised patent law, two or more similar designs for the same product may be disclosed in a single design application, in addition to designs of products sold or used as a set.
Stay tuned to www.maierandmaier.com for further updates on this and other IP topics.
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