January 2010 Archives

            In contrast to the United States, China will grant a compulsory license to non-patent holders if certain conditions are met.  After three years have elapsed from the time a patent is granted, any entity may petition SIPO for a compulsory license.  Generally, there are three instances when a compulsory license will be granted. 

            First, a qualified entity that has made reasonable requests for authorization but has failed to come to terms with the patent holder in a reasonable time.  Second, SIPO may grant a compulsory license in the event of a national emergency, extraordinary state of affairs, or where the public interest so requires.  Finally, a compulsory license may be granted when the exploitation of a later invention depends on the exploitation of the patent right in question.

            A compulsory license is not an exclusive right and does not permit the licensee to further authorize others to exploit the patent right.  In addition, an entity or individual that is granted a compulsory license is required to pay a reasonable fee to the patentee.  The fee should be negotiated between the parties, but failing an agreement, SIPO determines an appropriate payment.  Finally if the patentee is dissatisfied with the grant of the compulsory license, or the licensee is dissatisfied with SIPO's adjudication of the reasonable fee, either party may institute legal proceedings within three months of being notified.

            Designs are one of the three categories of patents along with inventions and utility models.  While all three categories share numerous provisions of the China Patent Law, in some instances designs diverge from the other two, and it is worthwhile to explore designs individually. 

            "Design" in the China patent law is defined as any new design, shape, the pattern or their combination, or the combination of the color with shape or pattern, of a product, which creates an aesthetic feeling and is fit for industrial application.  As noted previously, the duration of the patent right for a design patent is 10 years.

            Whereas the protection right for an invention or utility model is defined by the claims, designs rely on drawings or photographs depicting the patented design.  The drawings or photographs are limited in size, and may be accompanied by a brief explanation of the design.  An applicant seeking a design patent must submit these drawings or photographs along with a request and the product incorporating the design, and the class to which that product belongs.  The application is limited to one design incorporated in one product.

            Once filed, the application is only subject to a preliminary examination as to compliance with formal requirements.  The preliminary examination is essentially an expedited process to a patent grant so long as the design at issue is not identical with, or similar to any design, which before the date of filing, has been publicly disclosed in publications anywhere, and must not collide with any prior legal rights obtained by any other person.  SIPO will make a decision to grant the paten right for the design, issue the certificate, and register and announce it after the preliminary examination.

            Once granted, a design patent operates much like a patent for an invention or utility model in protecting the rights of the patentee.  No entity or individual may, without authorization of the patentee, exploit the design by making, selling or importing any product incorporating the patented design.