China Issues Interim Measures for Processing Related Examination Matters Regarding Implementation of the Amended Patent Law
On May 25, 2021, the China National Intellectual Property Administration (“CNIPA”) issued Interim Measures for Processing Related Examination Matters Regarding Implementation of the Amended Patent Law, effective June 1, 2021. The Interim Measures deal with topics including design patent term, protection of “partial” designs, domestic priority right for design applications, patent term adjustment and patent term extension, and examination of the good-faith requirement for patent applications.
While China’s Fourth Amendment to the Patent Law will come into effect on June 1, 2021,[1] the corresponding Implementing Regulations are still in the process of being revised in view of the public comment period which ended on January 11, 2021. In the meantime, on May 25, 2021, the China National Intellectual Property Administration (“CNIPA”) issued Interim Measures for Processing Related Examination Matters Regarding Implementation of the Amended Patent Law (“Interim Measures”), also effective June 1, 2021. The Interim Measures deal with topics including design patent term, protection of “partial” designs, domestic priority right for design applications, patent term adjustment and patent term extension, and examination of the good-faith requirement for patent applications.
The Interim Measures include eleven provisions and cover certain important aspects addressed in the newly amended Patent Law. Interestingly, although the Interim Measures provides the time and format of filing or submission for some new mechanisms, it stipulates the CNIPA will hold off most review or examination processes until the amended Implementing Regulations are eventually released. As a result, implementation and enforcement of the newly amended Patent Law may not be possible immediately upon its becoming effective on June 1, 2021. It is not publicly known at this time exactly when the revised Implementing Regulations be released. Some highlights and significance of the Interim Measures are as follows.
1. Design Patent Term
According to the newly amended Patent Law, the term of design patent will be extended from ten years to fifteen years from the date of filing. The Interim Measures confirm that the new design patent term is only for design applications filed on or after June 1, 2021. The term of design patents granted on applications filed on or before May 31, 2021 remains ten years.
2. Partial Design
Article 2, Paragraph 4 of the newly amended Patent Law introduces patent protection for “partial” designs of products. Starting from June 1, 2021, applicants can submit a design patent application with partial protection of the product to the CNIPA. Because the Implementing Regulations are not yet released and related supporting electronic systems are still under development, according to the Interim Measures, applicants can temporarily submit partial design patent applications in paper form. However, the CNIPA will not examine these partial design applications until the new Implementing Regulations are released.
3. Domestic Priority Right for Design Applications
Pursuant to Article 29 of the newly amended Patent Law, a design application will be entitled to claim domestic priority within 6 months from the filing of a parent design application. The Interim Measures confirm that only design applications filed on or after June 1, 2021 may claim such domestic priority right.
In order to potentially extend the term of a design patent for which an application was filed on or before May 31, 2021, applicants may re-file the design application after June 1, 2021 claiming domestic priority from a parent application filed within the six month priority deadline, if applicable. By doing so, a design patent granted on the post-June 1 application may obtain the benefit of the newly extended fifteen-year patent term according to the new Patent Law. Nevertheless, the CNIPA will not review a claim of the domestic priority right until the new Implementing Regulations are released.
4. Patent Term Extensions and Patent Term Adjustments
According to Article 4, Paragraph 2 of the newly amended Patent Law, applicants can request both Patent Term Extensions (PTE) and Patent Term Adjustments (PTA) for a granted patent in appropriate circumstances. The Interim Measures confirm that the new law relating to PTE and PTA applies only to patents granted on or after June 1, 2021. The requests for PTA and PTE must be filed within three months of grant of the patent. Again, because the Implementing Regulations are not yet completed and supporting electronic systems are still under development, requests for PTA and PTE can only be submitted in paper form. CNIPA will not examine such PTA and PTE requests until the revised Implementing Regulations are released.
5. Examination of Good-Faith Requirement for Patent Applications
To crack down on abnormal patent applications and rein in abuse of patent rights, the good-faith requirement has been introduced by the new Patent Law. Pursuant to Article 20 of the new law, applying for patents and exercising patent rights shall follow the principle of good faith. The Interim Measures confirm that CNIPA will begin examining applications for good-faith requirement starting from June 1, 2021.
Conclusion
Generally speaking, the Interim Measures seem to send a message that the public and patent practitioners should “be patient and wait for issuance of the revised Implementing Regulations.” Given that the new Patent Law will be effective on June 1, 2021 without delay, the longer the wait for release of the amended Implementing Regulations, the greater the chances for confusion regarding actual practice according to the new Patent Law will be, as well as the obvious impact of increased CNIPA examination backlog. The OBWB China team will continue to monitor implementation of the new Patent Law after June 1, 2021 and will report again regarding further progress toward anticipated release of the Implementing Regulations.
