New Revisions to PRC Patent LawDATE：2020-11-26 FROM：LexField
By David Huang
China’s national Congress just approved new revisions to the Patent Law on October 17, 2020, and the revisions will take effect on June 1, 2021. This is a summary of revisions that reflect new legal positions. Revisions that merely reflect general policy encouragement or codify current judicial practice are not discussed.
1. Design patents
Article 2: Partial designs will be allowed.
Article 29: Domestic priority will be broadened to design patent applications.
Article 42: Term of design patents is extended to 15 years, from the current 10 years.
2. Grace period
Article 24: The first disclosure for the public interests in case of national emergency or unusual circumstances (e.g. use of a new drug to treat COVID-19 virus) is added to the scenarios that are protected by the 6-month grace period.
3. Ineligible matters
Article 25: Methods for nuclear transformation and substances obtained from such methods are added to the list of subject matters ineligible for patent protection.
4. Time limit to submit priority documents
Article 30: The time limit is extended to 16 months for invention and utility model patent applications, and 3 months for design patent applications.
5. Patent term compensation
Article 42: If an invention patent is granted 4 years after the filing date and 3 years after substantive examination is requested, upon the applicant’s request, unreasonable delay by the patent office should be compensated. Also, for an invention patent related to a new drug approved for marketing in China, a term extension of no more than 5 years should be given to compensate time spent in drug approval process and the effective term of protection after the marketing approval shall not be longer than 14 years.
6. Voluntary license
Article 50-52 will introduce this licensing scheme. The owner who commits his patent to this scheme should file a declaration with the patent office specifying how the royalties are to be collected, and one who wants to obtain such a license should notify the patent owner and pay the royalties as specified. A voluntary license can only be a non-exclusive one. Annuities for patents under a voluntary license will be reduced or waived.
7. Patentability Evaluation Report for utility model and design patents
Article 66: In case of a civil or administrative enforcement action, the accused infringer can also request the patent office to issue this report.
8. Powers of administrative enforcement authority
Article 69: The administrative authority is still not granted the powers of copying relevant documents (especially financial records) or seizing infringing samples in patent infringement cases, but has the powers in patent passing-off cases.
Article 70: CNIPA as the national patent office now has the administrative enforcement authority for “nationally influential” patent infringement cases.
9. Punitive damages
Article 71: Punitive damages up to 5 times of the normal damages can be awarded in case of serious willful infringement.
10. Statutory damages
Article 71: The upper limit of statutory damages is increased to RMB 5 million (~US$ 700K), and a lower limit of RMB 30K is also provided.
11. Patent linkage
Article 76 will introduce the linkage system. An implementing regulation jointly drafted by CFDA and CNIPA is currently for public comments.