CHINA VIRTUAL INTELLECTUAL PROPERTY LAW NEWSLETTER
Vol. 1, No. 24 - September 1, 2000
Special Edition
Comments on the Amendments of the Patent Law As a special supplement to readers of the CHINA VIRTUAL INTELLECTUAL PROPERTY LAW NEWSLETTER, the following is a brief discussion of the newly-published amendments to China's Patent Law. These amendments will come into effect next year. To see a full English translation of the amendments, click HERE. Feel free to reply with questions or comments. |
Lehman, Lee & Xu
China Lawyers, Notaries, Patent, Copyright and Trademark Agents
(formerly known as the L&A Law Firm)
mail@chinalaw.cc
Contact Our Other Offices:
shanghai@chinalaw.cc - shenyang@chinalaw.cc - tianjin@chinalaw.cc - guangzhou@chinalaw.cc - dalian@chinalaw.cc
Comments on the Amendments of the Patent Law
On August 25, 2000, the People's Congress of China passed a Decision Regarding the Revision of the Patent Law of the People's Republic of China. Some of the major changes involved in this revision include:
1. Cancellation of the Revocation Procedure
In the first amendment to the Patent Law in 1992, the pre-grant opposition procedure was replaced with a post-grant revocation procedure. This change allowed applicants to obtain their patent rights more quickly by speeding up the examination procedure. Based on the experience of patent applicants and patent professionals since 1992, it is clear that abolishing the pre-grant opposition procedure was a wise decision. However, the following questions were still outstanding:
First, the purpose of the post-grant revocation procedure is, in essence, identical to that of the invalidation procedure, that is to give the public an opportunity to challenge a patent. The grounds for requesting the revocation of a patent dovetail the grounds for requesting the invalidation of a patent, and the same goal can be achieved through both procedures. Therefore, the substantive rules and goals served by the revocation and invalidation procedures overlap.
Second, the Implementing Regulations of the Patent Law address some possible procedural overlaps of the two processes. For example, if an application for invalidation is filed subsequent to a revocation request, but no decision on the invalidation has yet been rendered, the request for invalidation will not be acted upon by the Patent Reexamination Board. According to the law, revocation may be requested only on the grounds set out in Articles 22 and 23 of the Patent Law. Conversely, an invalidation may be requested on much broader grounds. Therefore, if a revocation request has been filed and no decision has yet been rendered, no third party, especially the defendants in a patent infringement litigation, may request invalidation of the patent or participate in the existing revocation procedure.
Because this system severely restricts the options available to parties to infringement cases, the post-grant revocation procedure has been abolished in this revision. Clients should note that, after this revision, any person may request invalidation of a patent once the grant of the patent is announced.
2. Improvements of the Utility Model Patent System
According to the Patent Law, patents for utility models are granted without conducting substantive examinations. This leads to some uncertainty about the underlying strength of the patent rights - they might not withstand later scrutiny if challenged. This is of great concern when the patent holder sues a third party for patent infringement.
To solve this problem, the new Article 57 provides that: "...when the dispute involves a utility model, the People's Court or the administrative authority for patent affairs may request the patentee to furnish a search report conducted by the Administrative Authority for Patent Affairs of the State Council." Therefore, a burden is placed on the patent holder early on in the litigation to furnish information regarding the underlying strength of the patent.PROTECT YOUR NAME FROM CYBERSQUATTERS IN CHINA.
LEHMAN LEE CAN REGISTER YOUR ".COM.CN" FOR YOU IN ENGLISH OR CHINESE CHARACTERS
CONTACT US AT mail@chinalaw.cc
Tel: 8610-6532-3861; Fax: 8610-6532-3877
3. Strengthening of Patent Protection
3.1 Offer for Sale
To bring the Patent Law into accord with Article 28 of TRIPs, Article 11 of the Patent Law has been revised to include an offer for sale of a patented product as an infringing act.
3.2 Limitation on Non-infringing Acts
According to Article 62(2) of the old Patent Law, where any person uses or sells a patented product not knowing that it was made and sold without the authorization of the patent holder, his act shall not be deemed an infringement. Because this has been criticized as providing a loophole in the law, more limitations have been imposed on this kind of non-infringing act. According to the revision, the allegedly-infringing person has the burden to prove that the product was acquired legally. If his proof is convincing, he will not bear any liability. If not, he will be liable as an infringer.
4. Concerning the Phrase "Must be Approved by the Competent Department of the State Council"
According to Article 10(3) of the old Patent Law, any assignment of the right to apply for a patent or of a patent right by a Chinese entity, or individual to a foreigner, must be approved by the competent department of the State Council. According to Article 20 of the old Patent Law, any Chinese entity or individual who intends to file a patent application in a foreign country must also first obtain approval from the competent department of the State Council. In the spirit of reform and the promotion of international trade, these provisions have been deleted in the revision.
5. Regarding the Patent Cooperation Treaty (PCT)
Two paragraphs have been added to Article 20 to provide an official legal basis for the China Patent Office to act as a receiving office, international search authority and international preliminary examination authority of PCT applications. This is merely a formal recognition of a process that has been ongoing for several years.
6. Amendment of Article 36
According to Article 36 of the old Patent Law, an applicant filing for an invention patent that has filed a patent application in a foreign country for the same invention shall furnish search reports or examination results from the Patent Office in the country of filing. The procedural and organizational burdens to applicants were considerable. After the revision, if the China Patent Office does not require the applicant to furnish such documents, he need not do so. That is, the applicant is substantially freed from this duty.
Looking to build your web presence in China?
designed_for_china@distilleddesign.com
Web Design | Information Architecture | Hosting | Chinese Language Support | Strategy and Consultation
7. Regarding Judicial Review
According to the old Patent Law, any decision made by the Patent Reexamination Board in connection with patents for utility models and designs is final. This is not in conformity with the relevant provisions of TRIPs. Therefore, amendments to remedy this inconsistency have been made, according to which parties concerned have the opportunity to appeal the decisions of the Board in the People's Court.
8. The Administrative Authority
As regards passing off the patent of another individual or entity, the administrative authority for patent affairs is now more powerful. The individual or entity that has passed off may be ordered to make a public gesture, be subject to confiscation of illegally earned profit, and may be imposed a fine not exceeding treble the illegal profit or, if no profit was earned, not exceeding 50,000 RMB.
9. Preliminary Injunction Now Available
According to Article 61 of the new Patent Law, if the patent holder or any interested party has proof that his patent is being infringed upon or will be infringed upon, and the loss suffered would be irreparable if the infringement were not stopped, he may request the court to order the infringer to stop the infringing act, or to take property preservation measures.
NEED A CHINA WEBSITE PROTECTION STRATEGY?
LEHMAN & LEE CAN HELP YOU WITH WEBSITE COPYRIGHT, TRADEMARK, AND SECURITY ISSUES
CONTACT US AT mail@chinalaw.cc
Tel: 8621-6375-8240; Fax: 8621-6375-8705
Lehman, Lee & Xu
China Lawyers, Notaries, Patent, Copyright and Trademark Agents
(formerly known as the L&A Law Firm)
Suite 188, Beijing International Club
21 Jianguomenwai Dajie, Beijing 100020 China
Tel.: (86)(10) 6532-3861
Fax: (86)(10) 6532-3877
mail@chinalaw.cc
http://www.chinalaw.cc/
Contact Our Other Offices:
shanghai@chinalaw.cc - shenyang@chinalaw.cc - tianjin@chinalaw.cc - guangzhou@chinalaw.cc - dalian@chinalaw.cc
The China Virtual Intellectual Property Law Newsletter is intended to be used for news purposes only. It should not be taken as comprehensive legal advice, and Lehman, Lee & Xu will not be held responsible for any such reliance on its contents.
