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Understanding the Fourth Amendment of Chinese Patent Law

Defeng Song
27/07/2021

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China

The long-awaited revision of Chinese Patent Law was issued in October 2020, and has entered into force since June 1, 2021. As compared to the recently lapsed third amendment that was in force for 12 years, the fourth amendment has made significant changes from many aspects. This article is intended to navigate readers through these changes and analyzes their legal implications wherever possible.

Part One: Patent Application
 
1.1. Patent Subject Matter Eligibility
 
First of all, with respect to design patent, the new Chinese Patent Law has made a major breakthrough of including partial design into the scope of design patentable subject matters, thereby extending design patent protection to a design that is practiced a portion of a product, as opposed to a whole product, which cannot be separated or independently sold from the whole product.
 
Article 2
...
design refers to a new design made on a product’s shape, pattern, combination thereof, or the combination of color, shape, and pattern, that is aesthetically pleasing and suitable for industrial application.
Article 2
...
design refers to a new design made on the shape, pattern, combination thereof, or the combination of color, shape and pattern of a product as a whole or parts thereof, that is aesthetically pleasing and suitable for industrial application.

Addition of partial design in Chinese Patent Law is significant to design patent system, making design patent a lot more valuable in this ever-evolving technology world. However, partial design patent necessitates a different set of rules from whole design patents, in respect of prosecution, invalidation and infringement and so on. In order to accommodate partial design patents, the current patent system may need to be transformed through more specific rules in the wake of the new Chinese Patent Law. Secondly, nuclear transformation method is excluded from patent eligible subject matters.
 
Article 25 No patent shall be granted to the following items:
...
 
(5) Substances obtained by nuclear transformation methods;
...
Article 25 No patent shall be granted to the following items:
...
 
(5) Nuclear transformation methods and substances obtained by nuclear transformation methods;
...
 
1.2. Domestic Priority
 
The new Chinese Patent Law adds domestic priority to design patents, as a result of which all types of patent in China can claim both foreign and domestic priority of earlier patent filings.
 
Article 29
...
An application that is filed with the Patent Administration Department under the State Council within 12 months after the same subject matter has been first filed for invention or utility model patent in China may claim priority of the first filing.

 
Article 29
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An application that is filed with the Patent Administration Department under the State Council within 12 months after the same subject matter has been first filed for invention or utility model patent in China, or within 6 months after the same design has been first filed for design patent in China, can claim priority of the first filing.

Article 30 also adapts the deadlines for submission of priority documents for three types of patent applications.
 
Article 30 If the applicant claims priority, he shall submit a written statement at the time of application and submit a copy of the first patent application within 3 months; failing to file a written statement or failing to submit a copy of the patent application in due course shall be deemed that no priority has been claimed.








 
Article 30 Where priority of an invention or utility model patent is claimed, a written statement shall be submitted at the time of application, and a copy of the first application shall be submitted within 16 months from the date of the first application for an invention or utility model patent.
 
Where priority of a design patent is claimed, a written statement shall be submitted at the time of application and a copy of the first application shall be submitted within 3 months.
 
Failing to submit a written statement or failing to submit a copy of the first application in due course shall be deemed that no priority is claimed.

The time window for claiming priority of invention and utility model patents is twelve months, starting from the date of the first application. Article 30 of the new Chinese Patent Law extends the deadline for submission of priority documents by 1 month. For design patents, the deadline for submission is still three months from the date when the claim is made, and it also applies to the newly added domestic priority claim.
 
1.3. Grace period
 
Article 24 The invention-creation for which a patent is applied for shall not lose its novelty where any of the following circumstances occurs within six months before the filing date:
 
(1) it was exhibited for the first time at an international exhibition sponsored or recognized by the Chinese government;
(2) it was published for the first time at a prescribed academic conference or technical conference;
(3) it was disclosed by others without the consent of the applicant.


 
Article 30 The invention-creation for which a patent is applied for shall not lose its novelty where any of the following circumstances occurs within six months before the filing date:
 
(1) it was made public for the first time for the purpose of public interest in case of a national state of emergency or an extraordinary situation;
(2) it was exhibited for the first time at an international exhibition sponsored or recognized by the Chinese government;
(3) it was published for the first time at a prescribed academic conference or technical conference;
(4) it was disclosed by others without the consent of the applicant.

Article 24 of the new patent law adds a new circumstance where disclosure does not destroy novelty, that is, in a national state of emergency or extraordinary circumstances where the invention is disclosed for the first time and for the sake of public interest, and then is filed for patent application afterwards within six months of the disclosure. By prescribing a six-month grace period, new Chinese patent law encourages inventors to disclose inventions and creations under special circumstances before making the application to the patent office.
 
1.4. Patent term
 
The new Chinese Patent Law increases the term of design patents from 10 years to 15 years.
 
Article 42 The term of an invention patent is 20 years, and the term of a utility model and design patent is 10 years, all counted from the filing date.
 
Article 42 The term of invention patent is 20 years, the term of a utility model patent right is 10 years, and the term of a design patent right is 15 years, all counted from the filing date.
 
In addition, the new Chinese Patent Law creates a patent term compensation mechanism for invention patents.
 
Article 42
...
Where an invention patent issues after a pendency of 4 years or beyond from the filing date and 3 years or beyond from the date of request for substantive examination, the patentee may request for compensation of any patent term loss caused by unreasonable delay in the application process, except the unreasonable delay is caused by the applicant.
 
Also, to make up the time incurred for novel drugs’ pre-marketing review and approval process, Patent Administration Department under the State Council may, upon request of the patentee, add no more than 5 years to the patent term as compensation, provided that when the new drug is put into commerce the remainder of the patent term in total does not exceed 14 years.
 
The second paragraph of Article 42 compensates patent term loss for invention patents that are caused by unreasonable delays non-attributable to applicants in the application process, and the third paragraph compensates the time cost incurred in the new drug pre-marketing approval process. The time compensation mechanisms for invention patents and pharmaceutical patents, equivalent to the PTA (Patent Term Adjustment) and PTE (Patent Term Extension) in the United States, are meanwhile implementing relevant provisions in the first phase of the China-US economic and trade agreement.
 
1.5. Principle of good faith
 
Article 20 The principle of good faith shall be observed in the course of applying for patents and enforcing patent rights. No patent right shall be abused to harm public interest or legitimate others’ rights and interests.
 
If abuse of patent rights, elimination or restriction of competition constitutes antitrust, it shall be dealt with in accordance with the Anti-trust Law of People's Republic of China.
 
The new Chinese Patent Law provides the principle of good faith in the course of patent application and patent enforcement. Abusing patent rights to harm public interests or others’ legitimate rights and interests is not only prohibited by the patent law, but may also run against anti-trust law.
 
In respect of Article 20, it is worth noting how the good faith principle is applied in patent application process. Although Article 20 does not explain the principle in detail, it could be interpreted as being directed against application of patents out of bad faith, or any inequitable conducts committed by applicants in the course of patent prosecution, or both. This legislation is intended to tighten regulation on patent application process, an area which was relatively loosely regulated in this country.
 
Part Two: Patent Exploitation and Commercialization
 
2.1. Exploitation and Commercialization of service inventions & creations
 
Article 6
...
The employer may dispose of right to apply for patents and patent rights on its service invention-creations in accordance with the law, and promote exploitation and application of related invention-creations.
 
According to Article 6 of the new Chinese Patent Law, the employer, as the patentee of a service invention-creation, may determine how to deal with its right to apply for patent on its service invention-creations and patent rights that may be granted as a consequence, and may determine to promote exploitation and commercialization of the related invention-creation without consent from inventors. This amendment grants an employer autonomy in exploiting and commercializing patents, and helps incentivize right owners (usually employers in case of service invention) to invest more in commercializing patents.
 
2.2. Flexible reward & remunerations to inventors of service invention-creations
 
Article 15
...
This country encourages employers to adopt incentive stock options like shares, options, and dividends so that inventors or designers can derive reasonable share from the benefits of innovation.
 
According to Article 76 to Article 78 of the current Implementing Rules of Chinese Patent Law, employers may make an agreement with inventors/designer with respect to reward and remunerations for service invention-creations. In the absence of agreement, employers shall pay inventors/designers rewards and remunerations the statutory amount in the specific manner as prescribed by the Implementing Rules.
 
In practice, many companies, especially small and medium-sized enterprises, do not contract with inventors on rewards & remunerations. The statutory rewards and remunerations provided by the Implementing Rules of Chinese Patent Law to inventors can be a huge burden for these companies. Article 15 of the new Chinese Patent Law encourages flexible rewards and remunerations, which helps to reduce the burden on small and medium-sized enterprises, especially starter-ups, in their early stage of patent exploitation and commercialization. Even though Article 15 is not mandatory, its orientation is very clear.
 
2.3. Creation of open license regime
 
Article 50 Where a patentee voluntarily makes a statement in writing to the Patent Administration Department under the State Council that he is willing to license any entity or individual to exploit his patent, while specifying the standard of calculation of licensing fees and manner of payment thereof, the Patent Administration Department under the State Council shall make a public announcement on the open license correspondingly. Where an open license statement is filed for utility model and design patents, a patent right evaluation report must be provided.
 
Withdrawal of an open license statement shall be made in writing, and effected by public announcement of the Patent Administration Department under the State Council. Withdrawal of an open license statement does not affect any open license commitment prior to the withdrawal.
 
Article 51 Any entity or individual desiring to exploit a patent under open license regime may acquire a license to the patent by putting a written notice on the patentee and making payment of licensing fees in accordance with the standard of calculation and manner of payment as per the public announcement.
 
During exploitation of a patent under an open license regime, the annual patent fees payable by the patentee shall be reduced or exempted accordingly.
 
A patentee in an open license regime may grant an ordinary license to the licensee based on negotiation on the licensing fee, but shall not grant a sole or exclusive license.
 
Article 52 Any dispute over an open license shall be resolved by parties concerned through negotiation; in case parties concerned are not willing to negotiation or negotiation fails, they may request the Patent Administration Department under the State Council to mediate, or they may file a lawsuit with a people’s court.
 
Article 50 to Article 52 of the new Chinese Patent Law creates an open license mechanism for patentees. A patentee willing to utilize the open license regime shall make an ex parte statement to the Patent Administration Department under the State Council about his willingness to license and the standard of license fees and manner of payment thereof.
 
Entities or individuals who are desiring to exploit a patent under open license regime only need to write a notice to the patentee, pay the license fee as per the announcement and then will get the license automatically, which significantly reduces the transaction cost of license negotiation.
 
Open license is encouraged to be used that Chinese Patent Law requires reducing or exempting annual fees of a patent while the patent is being exploited under an open license regime.
 
2.4. The Patent Administration Department under the State Council shall actively promote patent license and commercialization
 
Article 48 The Patent Administration Department under the State Council and patent administration departments under local governments shall, in collaboration with relevant peer departments, take measures to strengthen patent public services and promote patent exploitation and commercialization.
 
Article 49 Where an invention patent of a state-owned enterprise or institution is of great significance to the national interest or public interest, competent departments under the State Council and provincial people's governments, autonomous regions, and municipalities, upon approval by the State Council, may, within the approved scope, decide to promote commercialization of the patent or to permit designated entities to exploit under which circumstance exploiting entities shall pay licensing fees to the patentee in accordance with national regulations.
 
First, in accordance with Article 48, governments should build infrastructures and provide public services to facilitate patent license and commercialization.
 
Secondly, Article 49 provides a special license regime for invention patents of state-owned enterprises and institutions, that is, for state-owned invention patents pertaining to national or public interest, competent authorities and governments may, upon approval from the State Council, take the lead in promoting and commercializing patents, and determine the license scope, licensees, as well as payment of license fees.
 
Part Three: Patent Protection
 
3.1. Protection of administrative channels
 
Article 64 Patent Administration Department, when investigating and disposing of any suspected patent passing-off activities, may question concerned parties, investigate circumstances relating to the suspected law violation, inspecting places where alleged infringement occurs; accessing and copying contracts, invoices, account books and other relevant materials relating to the suspected law violation; inspecting products relating to suspected law violation; sealing up or seizing products that are proved with evidence to be passing off. Article 69 Patent enforcement departments, when investigating and disposing of any suspected patent passing-off activities, based on prior obtained evidence, shall have the authority to take the following measures:
(1) questioning concerned parties and investigating circumstances relating to the suspected law violation;
(2) inspecting places where the suspected law violation occurs;
(3) accessing and copying contracts, invoices, account books and other relevant materials relating to the suspected law violation;
(4) inspecting products relating to suspected law violation;
(5) sealing up or seizing products that are proved with evidence to be passing off.
 
Patent administrative departments, when disposing of patent infringement disputes at the request of the patentee or interested parties, may take the measures (1), (2) and (4) of the preceding paragraph.
 
Concerned parties shall assist and cooperate and shall not resist or obstruct when patent enforcement departments and patent administrative departments exercise authorities provided in the preceding two paragraphs.
 
Article 69 grants authorities to both patent enforcement departments and patent administration departments to investigate and preserve evidence when handling patent infringement disputes.
 
Article 70 The Patent Administration Department under the State Council may, at the request of the patentee or interested parties, dispose of patent infringement disputes with significant influence nationwide.
 
Patent administration departments under local governments may dispose of patent infringement disputes at the request of the patentee or interested parties, and may consolidate multiple cases occurring within its administrative region that involve infringement upon the same patent; and may request a patent administration department under people’s government at the upper level to dispose of cases involving infringement upon the same patent occurring across administrative regions.
 
The first paragraph of Article 70 adds a new authority to the Patent Administration Department under State Council, which is to resolve patent infringement disputes with nation-wide significance. The second paragraph of Article 70 provides consolidation of multiple infringement cases based on the same patent occurring in one administrative region and across administrative regions.
 
3.2. Judicial protection
 
3.2.1. Damages    
 
1. How to calculate amount of damages
 
Article 70 The Patent Administration Department under the State Council may, at the request of the patentee or interested parties, dispose of patent infringement disputes with significant influence nationwide.
 
Patent administration departments under local governments may dispose of patent infringement disputes at the request of the patentee or interested parties, and may consolidate multiple cases occurring within its administrative region that involve infringement upon the same patent; and may request a patent administration department under people’s government at the upper level to dispose of cases involving infringement upon the same patent occurring across administrative regions.
Article 71 Amount of damages for patent infringement shall be determined in accordance with the actual loss suffered by the right holder as a result of the infringement or the profits gained by the infringer as a result of the infringement; where it is difficult to determine the losses of the right holder or the profits of the infringer, damages can be reasonably determined in reference to multiple times of the patent license fee. For willful patent infringement with severe circumstances, the amount of damages can be raised up to five times as much as determined in accordance with the above-mentioned method.
 
The first paragraph of Article 71 regards actual loss of the right holder and illegal profit of the infringer as two preferred methods of calculating damages in parallel. The patentee can decide which method to take in calculating damages. Generally, there is no rule of thumb in choosing one over the other. Sometimes there is actual loss on the side of right owner, but the infringer does not make any profit. Sometimes the infringer gains a lot from infringement while the right owner loses nothing.
 
In addition to amount of damages, burden of proof is another factor that may affect the choice of right holder between two approaches. Generally speaking, from right owners’ perspective, it shall be easier to prove their own losses rather than their opponent’s profits, especially in the absence of discovery proceedings.
 
That said, right owners may decide not to prove damages by evidence of losses, when they anticipate to get a higher damage by taking the other approach or when they consider production of loss evidence may reveal their business secrets like sales data, profit margin, and so on.
 
For willful infringement with severe circumstances, amount of damages may be ramped up to five times that of non-willful infringement as determined by aforementioned manners.
 
In addition, Article 71 replaced the provision regarding reasonable expenses from the first paragraph to the third paragraph.
 
2. The amount of statutory damages
 
Article 65 Where loss of the right holder, profits of the infringer, and the license fee cannot be determined, people’s court may decide amount of damages from RMB 10,000 Yuan to RMB 1,000,000 Yuan, considering factors like patent types, the nature and circumstances of infringement. Article 71 Where loss of the right holder, profits of the infringer, and the license fee cannot be determined, people’s court may decide the amount of damages from RMB 30,000 Yuan to RMB 5,000,000 Yuan, considering factors like patent types, nature and the circumstances of the infringement.
 
The lower and upper limits of statutory damages have been raised to RMB 30,000 Yuan and RMB 5,000,000 Yuan, respectively.
 
3. Reasonable expenses
 
The scope of damages provided in the third paragraph of Article 71 shall also include expenses reasonably incurred by right holders to stop infringement.
 
Reasonable expense provision was previously put at the end of paragraph 1, Article 65, after provisions on evidence-based damage calculation. By this arrangement, it could be easily interpreted that reasonable expenses shall be awarded only when damages are determined based on evidence, and shall not be awarded when damages are determined based on statute. In fact, some judges take this approach in case of statutory damages, where they only award damages without mentioning reasonable expenses.
 
The new Chinese Patent Law removes the expense clause from paragraph one of Article 65 where it is only a small portion of the damage clause to an independent paragraph, i.e. third paragraph of Article 71. This change may be construed as putting more weights on the expense clause. As per the new Chinese Patent Law, right holders’ claim for expenses should be examined and adjudicated separately, regardless which approach is taken in determining damages.
 
4. Shift of the burden of proof
 
Article 71, paragraph 4, in order to determine the amount of damages, people’s court may order the infringer to provide account books and other materials relating to infringement if the right holder has tried its best to provide evidence and the infringement related account books and materials are mainly controlled by the infringer. If the infringer refuses to provide or provides false account books and materials, people's court may determine the amount of damages in reference to the claims of the right holder and the evidence provided.
 
According to the fourth paragraph of Article 71, in order to determine damages, people’s court can shift the burden of proof to infringers in the event that the right owners have exhausted reasonable efforts in producing evidences whereas key evidence like account books and other materials are controlled by infringers. If the infringers do not produce evidence accordingly, people’s court may determine damages as per the claim of right owners and evidence furnished by them.
 
Undoubtedly, Article 71 eases difficulty on right owners’ side in proving damages especially when damages are to be calculated by the illegal profit gained by infringers. However, shift of burden is conditional upon right owners’ exhaustion of efforts in evidence production by themselves, and the affected evidence are limited to account books and materials.
 
When read in view of Paragraph 1 of Article 71, this exhaustion clause shall apply not only when damages are calculated by infringers’ illegal profit, but also when damages are calculated by right owners’ actual losses. Otherwise, the exhaustion requirement may easily be circumvented because right owners can always claim damages based on infringers’ profits and thereby avoiding any burden of proof in the damage determination process.
 
3.2.2. Preservation    
  1. property preservation and action preservation
Article 66 Where a patentee or any interested party proves with evidence that someone is committing or is about to commit infringement upon their patent, which will cause irreparable damages to their lawful rights and interests unless enjoined promptly, they may petition people’s court to order the infringing activities at issue to be ceased.
 
In making the petition, a security deposit has to be posted by the petitioner. Otherwise, the petition shall be rejected.
 
People's court shall make a decision within 48 hours from receipt of a petition, which can be extended by 48 hours under special circumstances that require so. Any decision of injunction once made shall be executed immediately. Any involved party that is dissatisfied with the decision may apply for a review; execution of a decision shall not be suspended during review.
 
Any injunctive relief must be lifted should no court action be initiated by the petitioner within 15 days from the date when people's court makes a decision of ordering the cessation of concerned activities.
 
If any petition is wrongly made, the petitioner shall make good damages suffered by the respondent due to the cessation of concerned activities.
Article 72 Where a patentee or any interested party proves with evidence that someone is committing, is about to commit infringement upon their patent, or is hampering them from enforcing their rights, which will cause irreparable damages to their lawful rights and interests unless enjoined promptly, they may petition people’s court to order property to be preserved, actions to be taken or prohibited.
  
Article 72 of the new Chinese Patent Law combines property preservation and action preservation, and expands their applicability from where patent infringement is happening or about to happen to where any activity is hampering right owners from enforcing their rights.
 
This seemingly slight change may bring about huge difference. In recent years, it is not uncommon to see courts from various countries, China included, award novel reliefs such as “injunctions of execution of court’s decision” and “injunctions of initiating a litigation with a court”, etc., especially when they are adjudicating high-stake cases for example when standard essential patents are involved. The new Chinese Patent Law actually provides a statutory basis for this. Any activity that may hinder the right holder from enforcing their rights will be potentially subject to Article 72.
 
In addition, the applicant can request a court to order not only cessation of patent infringement, but also any action or inaction of any specific activity from suspected infringers. In other words, any action/inaction that is necessary to cease patent infringement or to facilitate rights holders to enforce their patent rights may be subject to the order of preservation under Article 72.
 
Article 72 also removes provisions regarding right owners’ obligation of providing security deposit as a precondition of court’s award of any interlocutory relief and right owners’ liability of making wrongful petitions. Meanwhile, Article 72 deletes the circumstances where the preservation measures must be released as the timeline requirement that a court has to observe in making a decision.
 
2 evidence preservation
 
Article 67 In order to cease patent infringements, the patentee or any interested party may petition people’s court for evidence preservation before initiating a lawsuit under circumstances where evidence may be lost or difficult to be obtained in future.
 
People's court may order the petitioner to post security deposit before processing the petition; if the petitioner fails to post a security deposit, the petition shall be rejected.
 
People's court shall make a decision within forty-eight hours from the date of receipt of the petition. If a decision is made on evidence preservation, it shall be executed immediately.
 
If the petitioner does not institute a lawsuit within 15 days from the date when people's court takes the preservation measures, the measures shall be released by people's court.
Article 73 In order to cease patent infringements, the patentee or any interested party may petition people’s court for evidence preservation in accordance with the law before initiating a lawsuit under circumstances where evidence may be lost or difficult to be obtained in the future.
 
Article 73 removes the security deposit requirement on petitioner when seeking evidence preservation with a people’s court.
 
Article 73 also removes the timeline requirement of making a decision by people’s court as well as circumstances under which evidence preservation must be lifted.
 
The new Chinese Patent Law encourages the use of evidence preservation by right owners, and it also vests the court with wider discretion in adjudicating preservation matters. Meanwhile, the new Chinese patent law adds a limitation that any petition for reservation has to be made in accordance with the law, which may be used to prevent right holders from abusing preservation to jeopardize the legitimate rights and interests of respondents.
 
3.2.3. Extension and relaxation of statute of limitations    
 
Article 68 The statute of limitations for patent infringement shall be two years, which is calculated from the date when the patentee or any interested party knows or should have known the infringement.
 
The statutes of limitation is two years for patentees to claim payment of reasonable fees for use of invention from the publication of the application for invention patent until the patent issued, which shall be calculated from the date when the patentee knows or should have known that someone is using its invention, except that if the patentee has known or should have known someone’s use of its invention before the issue of patent, the statute of limitations shall be counted from the date of issue of the patent.
Article 74 The statute of limitations for patent infringement shall be three years, calculated from the date when the patentee or any interested party knows or should have known the infringement and the infringer.
 
The statutes of limitation is three years for patentees to claim payment of reasonable fees for use of invention from the publication of the application for invention patent until the patent issued, which shall be calculated from the date when the patentee knows or should have known that someone is using its invention, except that if the patentee has known or should have known someone’s use of its invention before the issue of patent, the statute of limitations shall be counted from the date of issue of the patent.
 
According to Article 74 of the new Chinese Patent Law, the statute of limitations for patent infringement is increased to three years, and also heightens the threshold for determination of the date of commencement, which requires not only knowledge of infringement, but also knowledge of infringer by the patentee or any interested party.
 
In addition, the statute of limitations for claim of payment of reasonable fees for use of the invention after the publication of an invention patent application has also been increased to three years, with the starting date unchanged.
 
3.3. Early dispute resolution mechanism for pharmaceutical patents
 
Article 76 In drugs’ marketing review and approval process, if any patent dispute relating to the drugs under application arises between the applicant for marketing approval and the patentee or any interested party, any concerned party may file a lawsuit with people’s court for adjudication on whether the technology pertaining to the drugs under review falls within the protection scope of others' pharmaceutical patents. The Medical Products Administration Department under the State Council may, within the prescribed time limit, decide whether or not to suspend the marketing review and approval process of relevant drugs as per an effective decision of people's court. 
 
Applicants for drugs’ marketing approval and relevant patentees or interested parties may also request for administrative resolution with the Patent Administration Department under the State Council over patent disputes relating to drugs for which marketing approval is applied for.
 
The Medical Products Administration Department under the State Council, working with the Patent Administration Department under the State Council, shall formulate specific measures of transition between drugs’ marketing approval and patent dispute resolution at the stage of application for marketing approval, which shall be implemented after being approved by the State Council.
 
Article 76 of the new Chinese Patent Law generally stipulates the early dispute resolution mechanism for pharmaceutical related patent disputes, that is, for patent disputes arising in the process of drugs’ marketing approval, concerned parties may request people's court to adjudicate on whether a specific technology falls within the protection scope of relevant patents, or to seek an administrative resolution on a patent dispute.
 
Article 76, which is believed to be equivalent to the “patent linkage system” as provided by the Hatch-Waxman Act of the United States, is actually a prototype version thereof. More specific rules need to be formulated by lower-level legislations in China in order for Article 76 to be implemented in practice.
 
First of all, Article 76 does not obligate the marketing approval applicant to make any statement on patent related questions, nor requires the applicant to put up any notice to patentees on the marketing approval process.
 
Secondly, Article 76 only prescribes court’s jurisdiction on deciding whether relating technologies of drugs under application falls within the protection scope of a specific patent only, but does not provide anything regarding patentability.
 
Third, Article 76 does not provide any timing requirement for relevant parties to initiate a court action, nor does it provide whether the marketing approval process should be suspended pending the court’s decision.
 
Part Four: Other Changes
 
4.1. In the course of resolving a utility model or design patent infringement dispute, the parties to the dispute may provide a patent evaluation report on their initiatives.
 
Article 66
…… ; patentee, interested party or accused infringer may also provide a patent evaluation report spontaneously.
 
4.2. Removal of administrative sanctions on misappropriation of the right to apply for a patent on non-service invention-creations.
 
Article 72 Anyone who misappropriates an inventor or designer’s right to apply for a patent on non-service invention-creations and other rights and interests provided in this Law shall be subject to administrative sanctions by his employer or the in-charge authority at a higher level.
 
4.3. Deletion of the expression of Patent Reexamination Board.
 
The new Chinese Patent Law deletes the expression of Patent Reexamination Board, while retaining the Patent Administration Department under the State Council to which the Patent Reexamination Board is affiliated to.

 About the Author:
Defeng(Devin) Song is a partner of fieldfisher, based in China. Defeng has an engineering background and receives law degrees from law schools in China, Europe and US.
 
Defeng practices intellectual property, technology law and dispute resolution. Specifically, he advises clients on IP prosecution, IP litigation, IP commercial, as well as technology contract, trade secret, data, unfair competition and so on.
 
Defeng advises clients from a wide range of industries including electrical & electronics, TMT, mechanics, computer science, and life science & heath sectors.
 
Defeng is qualified attorney at law in both China and United States (New York), and he also holds patent bars in China and United States.
 
Contact: defeng.song@fieldfisher.com

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