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".
While the previous revision of China's Patent Law only allowed the patentee to prevent others from making, selling and importing a patented product, the Third Revision adds "offering to sell" to the actions constituting infringement of a design patent.
Scope of Protection of Design Patent
Revised Article 60, Paragraph 2:
"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".
The revised patent law clarifies that the brief description may be used to interpret the protection scope of a design patent, in addition to drawings or photographs of the product.
Patentability Evaluation Reports
Revised Article 62:
"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".
The Revised Patent Law now requires a report on patentability, issued by the SIPO, whenever one seeks to enforce a patent right, in order to prevent bad-faith infringement actions.
Prior Art Defense
Revised Article 63:
"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".
The Revised Patent Law clarifies that if alleged infringers can prove that the technology or design that they exploit has been disclosed in the prior art, there should be no infringement.
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