Mr. Richard Yong, Partner, Lawyer and Patent Attorney

 

After the three years since the Standing Committee of the 13th National People's Congress passed the fourth Amendment to the Patent Law on October 17, 2020, the correspondingly amended Implementing Regulations of the Patent Law (the Implementing Regulations), finally promulgated on December 11, 2023, are to come into force on January 20, 2024. The new Implementing Regulations contain a total of 13 chapters and 149 rules, with many amendments made, including, among other things, those relevant to the examination principles, examination system, patent exploitation and application, and patent protection. This article, focusing on the more important revisions of the systemic provisions related to design patent application, priority, and patent term compensation, will be briefly interpreting these amendments to the relevant provisions for the reference of relevant and interested practitioners.

 

I. Amendments relevant to Design Patent Application

 

With regard to design patent application, the highlights of the current patent law are shown with the introduction of the partial design system, addition of the domestic priority of designs, and extension of the design patent term to 15 years. Besides, China's accession to the Hague Agreement in 2022 has made it possible for the new Implementation Regulations to specifically incorporate the new design system, and lay out the specific provisions, in Chapter 12, on the rules for the examination of design applications filed through the Hague Agreement.

 

1. Regarding partial designs: Rules 30 and 31 of the new Implementation Regulations respectively spell out the requirements for submission of drawings or photographs of design patent applications, and the requirements related to brief description. First, an applicant applying for a partial design patent should still submit a view of the overall product, and indicate the contents of the part claimed using dotted and solid lines in combination, or other means. Second, for a partial design that does not use both dotted and solid lines to indicate the claimed content or part, the applicant should specify the part for which protection is sought in the brief description.

 

2. Regarding domestic priority of design: The current Patent Law stipulates that the time for requesting domestic priority of a design is within six months from the date of filing the first patent application in China, and the time for filing the certified copy is within three months after the application. Rule 35 of the new Implementation Regulations stipulates that the prior application for priority of a design may be either a design application or an invention or utility model application, and the drawings in the invention or utility model patent application can be used as the basis for the priority of the design patent application. When the prior domestic application is a design application, the prior application is deemed to be withdrawn from the date on which the later application is filed, whereas where the earlier application is an invention or utility model application, the prior invention or utility model application is not considered withdrawn by virtue of the later application for a design. This exception is due to the fact that double patenting is unlikely for a later design and a prior invention patent or utility model, so there is no need for the applicant to abandon the prior application.

 

3. Regarding the special provisions concerning international design applications: To better harmonize with the Hague Agreement, the new Implementing Regulations provide, in Rules 136 to 144 of Chapter 12, for the legal status of international design applications and national and international examination procedure convergence. The new Implementing Regulations stipulate that for an international design application designating China with a determined international registration date under the Hague Agreement, the international registration date shall be regarded as the filing date of the Chinese application; After the International Bureau publishes an international design application, the CNIPA examines the international design application, and makes a decision to patent the application if no grounds for rejection are found after the examination. The International Bureau is notified of the examination decision, whether a patent is granted or not. In addition, the new Implementing Regulations set out specific provisions concerning, among other things, priority claims, novelty grace period, divisional applications, brief description of essential design points, procedures for recordal of change, as well as provisions on the convergence with the domestic design patent application system in terms of priority, novelty grace period, divisional applications, etc.

 

 

II. Regarding Amendments to Priority-related Provisions

 

It was provided, in the priority-related provisions of the former Implementation Regulations, that if an applicant files a later patent application at the expiry of the priority period, he cannot enjoy the right of priority, it is not possible to restore the right of priority, and there is no mechanism for adding any priority claim. This provision is not very applicant-friendly, nor completely consistent with the provisions of the current international treaties. In this context, the new Implementing Regulations have improved the associated rules of the priority system.

 

1. Priority restoration: Rule 36 of the new Implementing Regulations provides a remedy for the preceding priority. In the case of invention and utility model patent applications, the applicant can claim priority even if the application for a later patent is filed after the expiry of the priority period, as long as the filing date of the later patent application does not exceed fourteen months from the priority date. If priority restoration is requested between the twelfth and fourteenth months,  the priority restoration fee shall be paid.

 

2. Addition or correction in connection with priority: Before the amendments made to the Implementing Regulations, if priority is claimed, the applicant needs to claim all the priorities at the time of filing the patent application, and no priority claims shall be added after the patent application is filed. The new Implementing Regulations provide a way to add or correct in connection with the priority. Under Rule 37 of the new Implementing Regulations, if an applicant for a patent for invention or utility model claims priority at the time of filing the patent application, even if one or more priority rights are missing or incorrectly filled in at the time of filing the patent application, he can still request addition or correction in connection with the priority within sixteen months from the priority date or within four months from the filing date. However, the above-mentioned priority-related addition clauses do not apply to design patents.

 

3 Incorporation by citation: By the system of incorporation by citation is meant addition of contents of the priority document to the current patent application with the filing date of the current patent application kept intact. Prior to the amendment made to the Implementing Regulations, China did not accept incorporation by citation, and if the applicant omitted certain elements when filing the application, it was not possible to make addition after the application was filed, even if the contents had been presented in the priority documents. Rule 45 of the new Implementing Regulations provides that if the applicant omits or erroneously submits the claims or description, or part of the description or claims when filing the application, as long as priority is claimed for the application and the missing contents are presented in the priority text, the applicant may submit these contents by invoking the priority text within two months from the filing date or within the time limit specified by any relevant notice to make rectification issued by the CNIPA, and the filing date will not be postponed due to the submission of supplementary documents. To a large extent, this provision will facilitate applicants to use prior applications to improve the relevant contents of the later applications, and make up for the negligence or omission in the later applications.

 

4. Regarding priority of the PCT international applications: For PCT international applications, China, as a designated state, has reservation in connection with the priority restoration. After the Implementing Regulations were amended, as requests are allowed for priority restoration for regular national applications under the new Rule 36,, accordingly, such requests should also be allowed for PCT applications, as is clearly stipulated in the new Rule 128. Under this Rule, if the Receiving Office of an international application under the PCT has already approved restoration of the priority, it is not necessary to go through the procedure for priority restoration after entry of the PCT international application into the national phase, and the CNIPA recognizes the restoration procedure. If the applicant does not request to restore priority in the international phase or the Receiving Office does not approve the request for the purpose, the applicant may request the restoration before the CNIPA within two months from the entry into the Chinese national phase.

 

III. Regarding Provisions on Patent Term Compensation

 

Article 42 of the Patent Law as amended in 2020 provides for two types of patent term compensation: 1) The invention patent term compensation, that is, compensation for the delay in granting an invention patent due to the examination, to compensate for the term of the patent for unreasonable delay in the patenting process of the invention at the request of the patentee, where the grant date is after four years from the date of filing the invention patent and after three years from the date of request for substantive examination. 2) The new drug patent term compensation, that is, compensation for the time taken up for the new drug marketing review and approval, and the patent term compensation shall be given to the patentee at his request for the invention patent relating to a new drug that has obtained marketing authorization in China; nevertheless, the compensation period shall not exceed five years, and the total effective patent term after the approval of the new drug shall not exceed fourteen years.

 

The present amendments made to the Implementing Regulations specifically provide for the operational rules for the two types of term compensation, with Chapter V Patent Term Compensation added, of which Rules 77 to 79 are directed to the invention patent term compensation, and Rules 80 to 84 to the new drug patent term compensation.

 

1. Invention Patent Term Compensation

 

The new Implementing Regulations make it clear that the time limit for a patentee to request term compensation is three months from the date of the patent grant announcement, with specified calculation method for term compensation and the circumstances under which the compensation does not apply: the term compensation is calculated on a daily basis, and the number of days compensated is the actual number of days of unreasonable delay in the process of patenting an invention. Specifically, the calculation of the number of days of compensation is the number of the days between the expiry of four years from the date of filing of the patent for invention and the expiry of three years from the date of entry into substantive examination to the date of announcement of the patent grant, minus the number of days of reasonable delay and the number of days of unreasonable delay caused by the applicant. At the very least, the circumstances of reasonable delay include: 1) the delay due to the reexamination proceedings if the applicant amends the claims in the reexamination proceedings before the rejection decision is revoked, and 2) the delay for suspension of the examination procedure due to ownership disputes or property preservation. Unreasonable delays caused by the applicant, at least, include those 1) due to delayed responses, 2) due to request for delayed examination, and 3) caused by incorporation by citation in supplementary documents. In addition, in the case of same-day applications for invention and utility model, the compensation provisions do not apply to the invention patent term.

 

2. New Drug Patent Term Compensation

 

Rules 80 to 84 of the amended Implementing Regulations have set forth specific provisions concerning new drug patent term compensation, mainly involving the following aspects: (1) It is clarified that the “new drug-related invention patents” in the Patent Law refer to patents for new drug products, preparation methods, and medical use. (2) It is stipulated that the time limit for filing a request for compensation shall be three months from the date on which the new drug obtains marketing authorization in China, with the corresponding requirements set forth: (i) if the new drug involves multiple patents, the patentee can request compensation for the term of only one of the patents; (ii) if a patent relates to multiple new drugs, patent term compensation can be requested based on only one of the new drugs; and (iii) the patent is valid and has not yet obtained compensation for the term of the invention patent relating to the new drug. (3) It is stipulated that the calculation method of the compensation period is: "The interval between the patent application and the date of obtaining marketing authorization for the new drug in China, minus five years, which shall be determined on the basis of compliance with the provisions of Article 42, paragraph three, of the Patent Law." It is worth noting that the result of the calculation of the compensation period in accordance with Article 82 shall not exceed the maximum period as stipulated in Article 42, paragraph three, of the Patent Law (i.e., the compensation period shall not exceed five years, and the total effective patent term after approval of the new drug shall not exceed fourteen years), and if the prescribed period is exceeded, compensation shall be made according to the prescribed maximum period. (4) It is stipulated that the scope of protection of a patent during the term compensation period is limited to the new drug and its approved indication-related technical solutions.

 

3. A Brief Comparison between the Two Term Compensation Systems

 

As shown from the above discussion, under the provisions of the new Implementing Regulations, the above-mentioned invention patent term compensation system and the drug patent term compensation system have their own characteristics, and the two are compared in the table below to facilitate understanding.

	Invention patent term compensation	New drug patent term compensation
Applicable Scope	All categories of invention patents	Products, preparation methods, and medical use patents for new drugs that have obtained marketing authorization
Applicable Conditions	Unreasonable delays in the invention patent granting process	The time taken up for review and approval for new drug marketing
Timing	It shall be requested to the CNIPA within 3 months from the date of patent grant announcement	It shall be requested to theCNIPA within 3 months from the date of obtaining marketing authorization for a new drug in China
Way of Calculation	The number of days between the date of filing application for invention patent and the expiry of 3 years from the date of request for substantive examination to the date of the patent grant announcement, minus the number of days of reasonable delay and the number of days of unreasonable delay caused by the applicant	The compensation term minus 5 years from the days in between the filing date and the date on which the new drug obtains marketing authorization in China, but the compensated term shall not exceed 5 years, and the total effective patent term after the approval of the new drug shall not exceed 14 years

 

IV. Amendments to Some Other Important Provisions

 

1. Regarding Dates of Submission and Receipt of Electronic Application Documents

 

Rule 4 of the new Implementing Regulations stipulates that the date of submission of various documents filed in electronic form shall be the date of entry into the specific electronic system designated by the CNIPA. Correspondingly, the date of all official notices delivered in electronic form shall be the date of entry into the electronic system recognized by the CNIPA.

 

2. Examination of Obvious Lack of Inventiveness in Utility Model and Design Applications

 

Rule 50 of the new Implementing Regulations stipulates the scope of preliminary examination of patent applications for utility model and design, and on the basis of the original scope of preliminary examination, further provisions are added for examining whether an application for the patent for utility model obviously lacks inventiveness and whether the application for the patent for design is obviously contrary to the principle that "the design for which the patent right is granted shall be significantly different from the existing designs or combination of features of the existing designs". Therefore, after entry into force of the new Implementing Regulations, the CNIPA will strengthen search for prior art and prior design as a clear part of the examination, and would issue office actions under Article 22, paragraph three, or Article 23, paragraph two, of the Patent Law.

 

3. Postponed Examination System

 

Rule 56, paragraph two, of the new Implementing Regulations stipulates that an applicant may request to postpone examination of a patent application. For the three categories of invention, utility model and design patent applications, an applicant may request to postpone the examination.

 

4. Modified Examination Method in Reexamination Proceedings

 

Under Rule 62 of the former Implementing Regulations, after a request for reexamination is accepted, the pre-examination procedure would be gone through, and the pre-examination shall be made by the original examination department, and a pre-examination opinion would be put forward. If the original examination department insists on the rejection, the reexamination and invalidation department will conduct a collegial examination, and if the original examination department withdraws the rejection decision, no further collegiate examination is required. The provisions of Rule 62 have been entirely deleted from the new Implementing Regulations, and the provisions on the pre-examination have been moved into the Patent Examination Guidelines. Under the new Patent Examination Guidelines, after the request for reexamination is accepted, the pre-examination procedure is still a mandatory procedure, but the procedure is not gone through by the original examination department alone.

 

In addition, Rule 67, paragraph one, of the new Implementing Regulations provides for the examination of "other obvious non-compliances of the Patent Law and the relevant provisions of the Implementing Regulations in the patent application". According to the relevant contents of the new Implementing Regulations, in the pre-examination and collegial examination, the scope of examination is not limited to the contents raised in the request for reexamination, and it would also include other obvious non-compliances with the provisions in the patent application, which provides a legal basis for some ex officio examination to be conducted in the reexamination proceedings, and the wording “upholding rejection decision” in the reexamination decision has been changed into “rejecting reexamination request”

 

5. Mechanism Added for Publishing Amended Claims in Invalidation Proceedings

 

Under Rule 73, paragraph one, of the new Implementing Regulations, if the patentee amends the claims in the invalidation stage, and the CNIPA makes a decision to maintain the validity of the patent or declare the patent partially invalid on the basis of the amended claims, the CNIPA shall publish again the amended claims.

 

6. Restoration of Right When Time Limit for Requesting Reexamination Is Overdue

 

The amended Rule 6 of the new Implementing Regulations clearly provides for the restoration of right when the time limit for requesting reexamination is overdue. Under the amended Rule 6, paragraph two, where the time limit for requesting reexamination is overdue, a request for restoring the right may be made within two months from the date on which the time limit for requesting reexamination expires. Under the former Implementing Regulations, the time limit for requesting restoration of right is two months from the date of receipt of the notice of right loss, however, for the time limit for requesting reexamination, the notice of right loss is not to be received if the time limit is overdue, thus rendering the restoration of the time limit for requesting reexamination impossible to proceed in strict accordance with the provisions of the Implementing Regulations. It is very much operable to request restoration within two months from the date of expiry of the time limit for requesting reexamination.

 

7. Grace Period of Non-loss of Novelty

 

The present amendments expand the scope of academic conferences or technical conferences that do not cause loss of novelty, and expand the scope of "academic conferences or technical conferences" to such an extent as to include "academic conferences or technical conferences convened by international organizations recognized by the relevant competent authorities of the State Council", so that meetings convened by international organizations like IEEE would probably be included in the scope of meetings allowing the grace period for non-loss of novelty. In addition, the amended third paragraph of this Rule removes the requirement of source of supporting documents, and only requires applicants to provide supporting materials proving that the invention-creation has been exhibited or published, and showing the date of the exhibition or publication, thus reducing the evidentiary requirements for the sake of applicants.

 

 

Author’s Profile:

Mr. Richard Yong Wang graduated from the Department of Computer Science of East China Normal University in Shanghai in 1991, and received his Master's degree from the Institute of Computing Technology of the Chinese Academy of Sciences in 1994, and his Master's degree in law from the People's University of China in 2005. From 1994 to 2006, Mr. Wang worked as a patent attorney in China Patent Agency (Hong Kong) Ltd., and joined Panawell Partners LLC as a senior partner in 2007.

Mr. Wang is a member of the All-China Patent Attorneys Association, a member of the Electronic and Information Technology Professional Committee of the All-China Patent Attorneys Association, a member of the China Branch of the Licensing Executives Society (LES), a member of the China Branch of the International Association for the Protection of Intellectual Property (AIPPI), and a member of the China Branch of the International Federation of Intellectual Property Attorneys (FICPI), and a patent attorney training lecturer of the All-China Patent Attorneys Association.

Mr. Wang's professional practice mainly covers computer hardware, computer software, communication technology, semiconductor devices and preparation technology, automatic control and household appliances. He has been engaging in consulting and agency work for intellectual property protection for decades, representing domestic and foreign applicants in executing thousands of patent applications, and gaining rich experience in drafting patent applications, replying office actions, dealing with cases of patent application reexamination, patent invalidation, patent administrative litigation, infringement litigation, integrated circuit layout and computer software protection. As an experienced lawyer and patent attorney, Mr. Wang has participated in dozens of patent cases involving many well-known multinational companies in the world as a leading and main counsel.