Recent changes in Patent and Design Law in China

26 January 2024

China's patent landscape has evolved significantly, with a judicial emphasis on industrial property rights protection. Recent reforms include adjustments in official communication deadlines, priority restoration, and flexible correction of priority claims, reflecting adaptability to modern technologies and promoting fairness in evaluations.

26 January 2024

In the dynamic landscape of intellectual property, China has emerged as a prominent player, making a significant impact in the fields of patents, utility models and designs.

From 2019 to 2022, the country has undergone notable developments in application filings, reflecting its steadfast commitment to innovation and technological advancement.

Over the four-year period, patent application filings have consistently grown. In 2019, approximately 1.4 million patents were filed, a number that has significantly increased, reaching an impressive 1.6 million in 2022. These figures not only attest to the vigor of the Chinese innovation system but also underscore China’s importance in the global intellectual property landscape.

Utility models have seen even more remarkable figures, increasing from over 2.2 million in 2019 to nearly 3 million in 2022.

In the judicial aspect, data from China is noteworthy, highlighting a greater emphasis on the protection of industrial property rights. According to the “Judicial Protection of Intellectual Property Rights in Chinese Courts (2022)” report, first-instance patent infringement cases reached 38.970 in 2022, representing a 23% increase from the previous year.

Based on statistics related to damages awarded in patent litigation from 2012 to 2022: the median damages awarded increased from 100.000 yuan to 200.000 yuan and the average damages awarded increased from 220.000 yuan to 2.58 million yuan.

The following highlights the most important points that have been changed and how they would affect inventions and designs filed in China. 

Official communication deadlines

The introduction of New Rule 4.7 has marked a significant shift in deadlines for official communication. Previously, a 15-day deadline after dispatch was available for both electronically delivered and mailed communications. However, after January 2024, the deadline for electronic communications is adjusted, while the deadline for mailed communications remains unchanged. This change reflects adaptation to modern technologies and emphasizes the importance of promptness in electronic filing.

Priority restoration

New Rule 36 introduces the possibility of restoring priority for invention and utility model applications. Applicants now have a 14-month period from the priority date to request restoration, based on justifiable reasons, even those falling below the unintentional standard. This provision not only provides flexibility to innovators but also promotes a more equitable approach in application evaluations.

Additions and corrections of priority

New Rule 37 allows patent and utility model applicants to request the addition or correction of priority claims within an extended period of 16 months from the priority date or 4 months from the filing date. This change gives applicants a broader window to adjust their priority claims, enhancing the accuracy and robustness of their applications.

Incorporation by reference

New Rule 45 addresses situations where parts of claims and descriptions may have been omitted or incorrectly presented. Now, applicants can supplement these parts by referencing documents from previous applications within two months from the filing date. This flexibility, applicable to inventions and utility models, facilitates error correction without compromising the filing date.

Partial design and national priority

New Rules 30, 31, and 35 expand the consideration of partial designs and national priorities. A view of the complete product is required when submitting a partial design application, and claiming national priority for designs within 6 months before filing but before granting is allowed. These provisions encourage a more comprehensive and strategic approach to design protection.

Grace period for novelty

Revised Rule 33 extends the scope of “disclosure events” in Article 24 of China’s Patent Law, including not only nationally organized meetings but also those recognized by international organizations. The relaxation of document requirements for international exhibitions and meetings reflects China’s commitment to global harmonization in intellectual property protection.

Significant examination rules

Good faith as grounds for rejection

The new rules (11, 50, 59, and 69) introduce the principle of good faith as grounds for rejection in patent examination and reexamination processes, offering a powerful tool against unfounded applications not based on genuine innovative activities. Violations of this principle may result in warnings and fines of up to 100.000 yuan, signaling a stricter approach in application evaluations.

Recusal in reexaminations and invalidity

The new rule (42(4)) establishes the recusal of the examiner who participated in the original application in reexamination and invalidity processes. Additionally, the patent holder or involved parties can request recusal. This change strengthens impartiality in procedures by introducing an independent interim review.

Deferred examination and evaluation of utility models and designs

Revised rules (56) and new rules (50) extend deferred examination options and assess inventive step evidence in the preliminary examination of utility models and designs. This flexibility provides applicants with adaptive strategies to manage the examination process according to their needs.

Relevant rules for granting

Adjustment and Patent Term extension

New rules (77-79) introduce adjustments to the Patent Term, establishing criteria to compensate for unreasonable delays in granting. Reasonable and unreasonable delays are identified, and applicants may face reductions in the patent term for delays caused by themselves. Additionally, specific rules (80-82) are introduced for Patent Term extension applicable to new drugs, highlighting the importance of pharmaceutical innovation.

Finally, we will discuss very interesting new rules, such as the new Rules (62, 63), through which the China Patent Office can issue patent evaluation reports for patents, utility models, and designs. In addition to the patent holder and interested parties, the “accused infringer” can also request the patent evaluation report.

The China Patent Office can prepare a patent evaluation report within 2 months from the receipt of the patent evaluation report request.

Regarding the relationship between the rights holder and the inventor or author of the invention, it should be noted that the entity to which a patent right has been granted can agree with the inventor or designer, or stipulate in its rules and regulations, formulated in accordance with the law, the manner and amount of rewards and remuneration to be given to inventors or authors. Entities are encouraged to implement property rights incentives and adopt actions, options, dividends, and other means to allow inventors or designers to reasonably share the benefits of innovation.

In case of failure to reach an agreement on rewards, the entity must, within three months from the date of the patent right grant announcement, grant rewards to the inventor or designer, in invention patents not less than 4.000 yuan (previously 3.000 yuan), while in utility model or design it will be not less than 1.500 yuan (previously 1.000 yuan).

If there is no agreement on remuneration, the entity must grant the inventors a reasonable remuneration in accordance with the provisions of the Law for Promoting the Transformation of Scientific and Technological Achievements.

5/5 - (2 votes)

Jesús González Ahijado

Director de Patentes.Departamento de Patentes.

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