How implementing regulations will affect foreign patent applicants in China

In Insights

7 February, 2024

On December 21, 2023, the China State Council issued Implementing Regulations of the Patent Law (Regulations). The Regulations became effective on January 20, 2024 and compliments the fourth amendment to the Patent Law.

The Regulations explain how several provisions of the Patent Law will be implemented as it aligns patent procedures with major jurisdictions. This article introduces key changes in the Regulations that we believe will significantly impact foreign applicants in China.

15-day rule abolished (except for postal mail applications)

For all documents filed electronically, this will provide a shortened response period, which begins the day after it has been dispatched. This aligns with recent changes to European practice and removes the previous 15-day period where documents were deemed to be received 15 days after the dispatch date. This exception does not apply to documents that are sent through the post.

This provides a shortened response period and simplifies the calculation of deadlines.

Priority Right

In line with the UK, EP and US patent practice, the Regulations state that if an applicant fails to file a Chinese invention/utility model patent application within 12 months from the priority date, they may apply for the restoration of the priority date within two months after the end of the 12-month period, provided that a justifiable reason can be provided.

This is the first time applicants can enjoy a priority claim for late-filed applications.

Priority claim additions or corrections 

The Regulations allow the correction or addition of a priority claim after filing the Chinese application. A request to do so must be made within four months from the filing of the application or 16 months from the filing date of the earlier application, whichever is later.

Incorporation by reference

The Regulations clarify that when a portion of claims, specifications, etc., of an invention or utility model patent application is omitted or incorrectly submitted at filing, the applicant can make a supplementary submission within two months after filing or a specified period through incorporation by reference of a prior application, provided that the application claims the priority from the previous application and the omitted parts or correct content for the application are contained in the preceding application.

Preliminary examination of inventiveness for utility models and designs

The amended regulations set new examination criteria for utility models and design applications. In addition to novelty, the preliminary examination of utility model applications also covers the assessment of any obvious lack of inventiveness.

Similarly, for design applications, a patentable application should “clearly distinguish from the prior design or a combination of features of the prior designs”.

These new criteria are believed to be part of the CNIPA’s efforts to improve the quality of patents in China.

Partial Designs

Partial design protection brought Chinese practice in line with many other major jurisdictions like the US and Europe. This will aid foreign applicants as they are no longer required to remove dashed or dotted lines when extending a partial design application to China.

The Regulations clarify the requirements for the filing documents for partial design applications. In particular, the views of the product as a whole are still needed to file the partial design for the product. If necessary, the applicant should indicate the part to be protected for partial design in the Brief Description of the application.

Patent Evaluation Report

The Regulations expand the scope of subjects eligible to request that CNIPA provide a patent evaluation report from patentees and interested parties to include alleged patent infringers.

This expansion of scope may prove valuable to international companies as defendants in patent infringement disputes in China.

Patent Term Adjustment (PTA)

The patentee can request PTA within three months from the patent’s grant date. The term of PTA is the interval between the grant date of the patent and the date of four years from the filing date or three years from the date of requesting substantive examination, whichever is later, minus the CNIPA’s reasonable delay and the unreasonable delay caused by the applicant.

The Regulations also clarify the circumstances deemed as a reasonable delay by the CNIPA and unreasonable delays caused by the applicant.

Patent Term Extension (PTE)

Patent Term Extension (PTE) is available to compensate for the time needed to obtain administrative approval to market new drugs in China. The Regulations define the “new drug-related invention patent” in the context of the Patent Law as product patents, preparation method patents and medical use patents of the active pharmaceutical ingredient (API) contained in a “new drug”.

The PTE term equals the date of market approval of the new drug in China minus the filing date of the Chinese patent minus five years. The maximum PTE is five years, and the resulting total effective patent term after drug approval for marketing shall not exceed 14 years.

Hague Agreement

The Regulations further set out details for applying under the Hague Agreement. International design patent applications shall be examined based on provisions in Chinese Patent Law. The international registration date is the national filing date for the corresponding Chinese design patent application, and the CNIPA will accept the priority claim made at the international stage.

Foreign applicants may find the Hague system more attractive when obtaining international design protection now that China is included.

Comment 

The Regulations provide much-awaited guidance for practitioners and applicants in China, especially as it has been four years since the fourth amendment to the Patent Law was promulgated.

 

 

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