Comments on the latest revision points of the detailed rules for the implementation of patent law
Cui Guobin, Professor of Intellectual Property Law Research Center of Tsinghua University Law School
After the revision of the Patent Law in 2020, the General Administration of Market Supervision and China National Intellectual Property Administration submitted the Detailed Rules for the Implementation of the Patent Law (Revised Draft for Review) to the State Council in 2021. During the trial, the revision of the detailed rules caused widespread concern, and decision makers repeatedly sought public opinions and sought consensus for this. The author participated in the consultation meeting on the revision of the Detailed Rules for many times, reviewed the whole revision process, and deeply realized the difficulties in the decision-making process and the hard-won results.
First, on the refinement of the principle of good faith
Article 20 of the revised patent law introduces the principle of good faith, that is, "the principle of good faith should be followed when applying for patents and exercising patent rights." Do not abuse the patent right to harm the public interest or the legitimate rights and interests of others. " Lawmakers hope to use this clause to crack down on abnormal patent applications or patent abuse. On this basis, the Detailed Rules make more specific provisions, requiring patent applicants to "file all kinds of patent applications on the basis of real invention and creation activities, and shall not resort to deceit" (Article 11 of the Detailed Rules), and "the patentee shall not make a declaration of opening the license or obtain a reduction or exemption of the annual patent fee during the implementation of the open license" (Article 88 of the Detailed Rules). At the same time, the "Detailed Rules" stipulates the administrative responsibility for the above-mentioned illegal acts: "The department responsible for patent law enforcement at or above the county level shall give a warning and may impose a fine of less than 100,000 yuan." (Article 100 of the Rules).
Abnormal application is a stubborn disease in the patent field. The main purpose of patent applicants’ fraud and patchwork of patent applications is to take advantage of loopholes in government policies such as patent application funding or tax incentives for high-tech enterprises to defraud government funding, subsidies or other preferential treatment. Before the Administrative Responsibility was stipulated in the Detailed Rules, China National Intellectual Property Administration promulgated the Provisions on Regulating Patent Application in 2017 to regulate the abnormal patent application. In 2018, 37 ministries and commissions jointly issued the Memorandum of Cooperation on Joint Punishment of Serious Untrustworthy Subjects in the Intellectual Property (Patent) field, which listed abnormal patent application as the main target. However, the above-mentioned Regulations and Memorandums mainly regulate the patent fee reduction, public notification, no funding or reward, criminal responsibility (fraudulent funding and reward), and qualification for participating in certain business activities, but do not stipulate direct administrative punishment measures for applicants. Now, Article 100 of the Detailed Rules fills this legislative vacancy, and authorizes the department in charge of patent law enforcement to warn or fine the applicant for abnormal patent application.
Second, regarding the request for delayed review
The current patent law does not clearly stipulate that the applicant can apply for postponing the patent examination procedure. After the application for a patent for invention is filed, the applicant shall request substantive examination within 3 years; Failing to apply for review within the time limit will be deemed as withdrawal. When necessary, China National Intellectual Property Administration can also take the initiative to conduct patent examination. The application for patent for utility model and design shall be examined in the first instance according to the established process, and then authorized. If the patentee wants to get authorization earlier, he can choose the fast review channel for charging or the fast pre-trial procedure provided by local intellectual property protection centers all over the country.
In 2023, China National Intellectual Property Administration issued the Guide for Handling Delayed Examination of Invention Patent Applications, which introduced the system of delayed examination of invention patent applications. Article 56, paragraph 2, of the Rules confirms this practice in legislation, and it is clear for the first time that "the applicant may file a request for delayed examination of the patent application". This is an important reform of the patent examination system, which can protect the interests of patentees more effectively. As mentioned in the above Guide, delaying the examination has many advantages for the applicant: the applicant can write appropriate claims according to the latest technological progress, market competition or changes in the standardization process, thus making patent protection more targeted; Have the opportunity to enjoy the convenience brought by the latest patent examination policy, such as supplementing experimental data, protecting storage media and program products in the computer field, etc. We can decide whether to continue the patent examination process according to the market situation of products, so as to avoid bearing the cost for unnecessary patent examination activities; You can reasonably arrange your own pace of responding to patent examination opinions, be able to deal with urgent matters more intently, and so on.
Third, about the priority system
The patent application priority system allows the applicant to cite the technical scheme or design content in the earlier application in the later application, and obtain the benefit of the application date of the earlier application for the cited part, so as to avoid the loss of novelty of the content cited in the later application. In the past, the Patent Law stipulated that applications for patents for inventions, utility models and designs filed in foreign countries enjoyed foreign priority, while applications for patents for inventions and utility models filed in China enjoyed domestic priority. However, the design application filed in China does not enjoy the domestic priority. The revised Patent Law extends the domestic priority to the application for a patent for design filed in China. In this context, the Detailed Rules have improved the supporting rules of the priority system.
First of all, the Detailed Rules make it clear that the appended drawings in an application for a patent for invention or utility model can be used as the basis for the priority of an application for a patent for design. At the same time, after the applicant for a patent for design puts forward the priority request, it will not lead to the invention or utility model patent application as the basis of priority being "regarded as withdrawn". The reason for this exception is that there is no possibility of duplicate authorization between the later design and the earlier invention patent (utility model), so there is no need for the applicant to give up the earlier application.
Secondly, the Detailed Rules allow the applicant for a patent for invention and utility model to request the restoration of the right of priority within two months after the expiration of the time limit for filing the right of priority, provided that there are justified reasons. This provision enables applicants to gain more procedural flexibility.
Finally, the "Rules" make it clear that an applicant may add or correct the priority request within the prescribed time limit after making the priority request; Or, use the contents of the previous application as the basis of priority to correct the missing contents in the description or claims of the current application. The latter practice is called "citing to join" system, which greatly facilitates the applicant to use the earlier application to improve the relevant content of the later application.
IV. International application for design
In 2022, China joined The Hague Agreement on International Registration of Industrial Designs (1999). When the Patent Law was revised for the fourth time, some adaptive provisions were made in advance. If the protection of design is extended to local appearance, the protection period of design will be extended from 10 years to 15 years. In order to meet the needs of The Hague Agreement at the operational level, the Detailed Rules make supporting provisions on the connection between the international application for design and the domestic procedures.
According to the Rules, "an international application for design that has determined the international registration date and designated China according to The Hague Agreement shall be regarded as an application for a patent for design filed with the patent administration department of the State Council", and the international registration date shall be regarded as the filing date of domestic applications. "After the International Bureau announces the international application for design, the patent administration department of the State Council shall examine the international application for design". If the administrative department for patent in the State Council finds no reason for rejection after examination, it shall make an authorization decision. Whether authorized or not, the patent administration department of the State Council will inform the International Bureau of the examination decision. In addition, the "Detailed Rules" make specific requirements in terms of priority requirements, grace period for novelty, divisional application, brief description of design points, and procedures for changing rights.
Although there are many new rules about international application of design in the Detailed Rules, they are still some technical rules in general, which embodies the consensus of design examination and authorization practice.
V. On the Open Licensing System
The revised patent law introduces the patent open licensing system, which encourages the patentee to announce the licensing conditions voluntarily and facilitates the implementer to obtain the patent license. The Patent Law outlines the institutional framework of open licensing, and the Detailed Rules supplement more specific operational rules.
The "Detailed Rules" require that the patentee should specify the patent number, the patentee’s name, the license fee standard and payment method, the license period, etc. when issuing the license statement; After the two parties reach an open license, "they shall file with the patent administration department of the State Council on the basis of written documents that can prove that the license has been reached". According to the above provisions, the patentee should clearly state the core terms of patent license, especially the license fee standard, in the statement of opening license. This is obviously different from the practice of other countries in comparative law. For example, the open licensing rules in Britain and France only require the patentee to make an open licensing commitment without specifying the licensing conditions; If the potential licensee can’t reach an agreement with the patentee, the patentee accepts the licensing conditions determined by the intermediate ruling of the Patent Office.
From the practice of Britain, Germany, France and other countries that have adopted the open licensing system, the patentee gives up the right of unilateral pricing in exchange for the reduction and exemption of official fees of the patent office. China’s open licensing system does not restrict the patentee’s right to set prices unilaterally, but only requires it to announce the licensing conditions in advance. However, the patentee may abuse the open license system to defraud the patent office of official fee reduction, so as to reduce the maintenance cost of patent assets. The legislators of the Rules also foresaw this possibility, so they stipulated some preventive measures. For example, as mentioned above, the patentee is required to announce the licensing conditions and put on record the open licensing agreement, and it is clearly stipulated that "the patentee shall not make an open licensing statement or obtain the annual patent fee reduction or exemption during the implementation of the open licensing". In violation of the above provisions, the department in charge of patent law enforcement at or above the county level will give a warning and may also impose a fine of less than 100,000 yuan. In addition, in the future, when the Patent Office decides to grant official fee relief, it is likely to examine whether the open license agreement has actually been fulfilled.
The latest revision of the Detailed Rules is of great significance to the implementation of the revision of the Patent Law and the improvement of China’s patent system. The implementation of the compensation rules for patent term, the introduction of delayed examination system, the seamless connection between international application procedures and domestic procedures for design, and the improvement of priority system will systematically improve the level of patent protection in China. The detailed provisions of the principle of good faith in patent application also provide a powerful tool for administrative departments to crack down on abnormal patent applications and improve patent quality. Generally speaking, most of the latest revisions of the Rules meet public expectations, reflect the existing social consensus, and are the latest legislative achievements in the field of patent law in China, which is gratifying. The balance of interests between the patentee and the public is an endless dynamic process. It is expected that after the new patent law and implementation rules have been implemented for years, the society will reach a consensus on more complex issues, paving the way for the next revision.
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