Chinese Patent Law Revisions Expected in 2008

Thanks to the IP Dragon on February 22, 2008 for pointing to Charles and Jeanne Liu's four part, English-language series on the third revision of the Chinese Patent Law (“Patent Law (Draft Revision 2006)”) that is expected to be finalized in 2008 after the current 2000 version has been effective for eight years. Among the changes that they note

• OBVIOUSNESS STANDARD -- The inventiveness of an invention is defined as being an invention having significant substantive characteristics to “a person of ordinary skill in the art” and constituting a substantial technological advance in the field. Design Patents shall be substantially distinguishable from any prior design or a combination of the features of a prior design.
• PATENT/UTILITY MODEL CROSSOVER --If applications for an invention patent and for a utility model patent based on the same invention were filed on the same day by the same applicant, the applicant may take advantage of the crossover of the invention and utility model applications. An applicant might take advantage of the crossover of the applications for an invention patent and utility model patent when filing the applications in China through the Paris Convention, but that at the national entry into China for a PCT application, the applicant has to select either invention or utility model, but not both.
• SUB-DIVISIONAL TIMING -- A sub-divisional application may still be filed based on a divisional application, however, the time limit to file such sub-divisional application will now be governed by the status of the initial application rather than that of the parent patent application. The type of the application, either for an invention patent or for a utility model patent, must be the same as that of the initial application.
• FIRST FILING FOR INVENTIONS MADE IN CHINA -- The current patent law requires Chinese individuals and entities to first file applications in China for inventions made in China. The Patent Law (Draft Revision 2006) extends this requirement to both Chinese and foreigners such that a foreign filing license from the state patent administration is required for “any individual or organization” to file a patent application in a foreign country if the application is based on “an invention made in China.” if a person filed a patent application in a foreign country based on an invention made in China without permission from the Chinese patent administration, the person’s patent application filed later in China based the same subject matter will be denied approval in China.
• GREY-MARKET AND BOLAR EXEMPTIONS -- Under a new first-sale provision parallel or grey-market imports are permissible. Second, the draft revision newly introduced the “Bolar” exemption that the manufacture, use, or importation of patented pharmaceuticals or patented medical devices solely for obtaining and providing data required for regulatory approval of a drug or medical device is permissible.
• UNFAITHFUL PROSECUTION -- Where a patent owner knew that his patented art belongs to a prior art, but nevertheless unfaithfully brought an action against another party in an administrative or judicial proceeding for patent infringement, the patent owner will be held liable to the alleged infringer for damages caused by the unfaithful accusation.
• COMPULSORY LICENSING -- he patent administration may grant a compulsory license, upon request, for the use of a patented invention or utility model if the patent owner, without any legitimate reason, has not practiced or adequately practiced the patented invention for three years after issuance of the patent, or if the patent owner’s practice of the patented invention is deemed by the authority as unfairly excluding or restraining competition.
• GENETIC RESOURCE IDENTIFICATION -- the source of a genetic resource should be disclosed in the specification of a patent application if the accomplishment of the invention relies on the acquisition and use of the genetic r
• LAW FIRM DEIGNATIONS BY THE SIPO -- foreign applicants may entrust any legally formed patent agency in China to represent their patent applications in China, and on the other hand, domestic Chinese applicants may entrust any legally formed patent agency in China which ultimately works together with a foreign law firm, or even directly entrust a foreign patent firm to file their patent applications in a foreign country.