Amendments to the Implementing Regulations of the Patent Law in China
As of January 20, 2024, several amendments to the Implementing Regulations of the Chinese Patent Law entered into effect. These regulations have been implemented in line with the previous revisions to the national patent legislation enacted in 2020.
Patents
One of the most significant changes brought about by the new regulations is the alignment of Chinese patent law with the Patent Cooperation Treaty (PCT.) As such, a new provision for the restoration of priority rights for patent and utility model applications has been implemented. The allowance of restoration of priority rights is applicable to such applications which have exceeded the priority deadline with demonstrable good cause. It is further outlined that such restoration of priority must be made within two months from the initial deadline.
Should a PCT application priority be restored during the international phase, once the application has entered the national stage in China, the application will be re-examined by the China National Intellectual Property Administration (CNIPA). According to the recently amended national patent examination guidelines, the examination of such patent applications will follow a formal practice and the CNIPA will typically follow a receiving office’s decision in restoring a priority right that has been made in the international stage.
In instances where a request for the restoration of priority does not occur during the international phase, or if such request is not approved, an applicant will be able to submit a restoration request within 2 months upon entry into the national phase in China.
In further reference to PCT regulations, applicants may now supplement incorrect or missing elements to a claim or specification of a patent or utility model application by way of invoking prior applications identified in the prior search. As such, applicants are able to supplement such elements of an application within a two-month period following the date of filing. In such instances, the initial filing date will be retained.
The amended regulations have also introduced the possibility of three new types of drug patents, namely those for new pharmaceutical use, new drug products, and new processes of manufacture. An extension of the patent validity term is possible for applicants for new drug patents in order to mitigate the delay in time owing to the lengthy approval process of new drugs entering the market. This extended term is limited solely to the approved drug product and its intended use.
With regard to priority claims for national patents or utility models, if the right to priority has been claimed, applicants are now permitted to request to add or correct any priority claims within a 16-month period from the priority date, or within 4 months following the application date.
Further amendments to the regulations have been implemented regarding the good faith principle in respect to the conduct of an applicant during the patent prosecution process, as well as to patent right holders undergoing the patent licensing process. It is clarified that applicants and rights holders are prohibited from making false representations in order to obtain patent rights or licenses. Moreover, the CNIPA will now provide additional disclosure as to patent data including the de-classification of national defense patents, patent term compensation, open licensing, and the publication of amended claims in respect to invalidation proceedings.
Designs
The new regulations allow for applications for design patents to utilize the earlier filing date for priority based upon earlier patent or utility model applications in China. In such instances, the earlier application would retain its status and not be deemed to be withdrawn. Moreover, the regulations clarify that partial design applications may be submitted detailing a combination of both solid and dotted lines to clearly denote the elements of a design for which protection is sought alongside the elements that are not.
In addition to new design procedures, the regulations clarify that international design applications filed via the Hague Agreement designating China are to be deemed as national applications upon registration at the international stage. As such, design applications in the national stage will be examined by the CNIPA separately from the international phase, and international registration dates will be defined as the application date in China.
In addition to the aforementioned amendments implemented by the new regulations, it is also confirmed that the official date of service in respect to documents served by the CNIPA electronically will be set as the date when the document is received via a recognized electronic system.
The alterations to the Implementing Regulations of the Chinese Patent Law signify a move toward a more cohesive IP system in the country, aligning the patent legislation and procedures with international counterparts. This, in turn, is hoped to encourage further filings for intellectual property rights in China, and to enhance international collaboration in the IP field.