New Rules for Patent Examination and Protection in China (II)

View: 434     Date: 2023-12-27 11:25

Analysis on the optimization of patent application system through the Revisions to Implementation Regulations of Patent Law

Author: Na ZHANG

With regard to optimizing the patent application system and facilitating applicants and innovative entities, this revision to Implementation Regulations of Patent Law involves the following points:

1. Refining the requirements of documents for partial design application (R30, R31)

As the key points of design innovation focus more on the change of partial and detailed elements, compared with the traditional overall design, the objective needs of partial design are increased. Many countries already have patent protection systems for partial design, and China included the protection for partial design in process of the fourth revision to Patent Law.

In this revision to Implementation Regulations of Patent Law, the partial design system has been refined and implemented, and the relevant requirements of application documents have been clarified. The specific contents of the revision include:

R30 - Clarify the requirements for the view of partial design

R31 -- Specify the requirements for the brief description of partial design

In conjunction with the above legal provisions, the following practical guidance could be considered when applying for partial design patent:

Ø  To file a partial design application, the view of the whole product is requested.

Ø  On the view of the whole product, indicate the essential feature of the partial design that need to be protected;

Ø  The method of indicating can be a combination of dotted line and solid line, where the solid line is used for the content that needs to be protected;

Ø  Other ways of indicating are mainly detailed in Guideline for Patent Examination, for example, the part that does not need protection can be covered with a single color translucent layer;

Ø  For the brief description, if the view is a combination of dotted and solid lines, there is no need to specify the content for protection in the brief description, if the view is used in other ways, such as the translucent layer covered, it is need to specify the content for protection in the brief description.

2. Optimizing the relevant provisions on exceptions to lack of novelty (R33)

In view of the possible for emergency in the country, such as the urgent needs of special medical and health events such as epidemic prevention and control, or the timely applicable needs of disease treatment schemes and important formulas, technical schemes may be urgently disclosed and cannot obtain patent protection, thus failing to effectively protect the interests of innovative entities. During the fourth revision of the Patent Law, introduced an exception to lack of novelty " In times of national emergency or extraordinary circumstances, published for the purpose of public interest for the first time", so as to leave room for patent protection for emergency or extraordinary circumstances in the future.

In this revision to Implementation Regulations of Patent Law, the relevant provisions on exceptions to lack of novelty are refined and supplemented, the provisions on the grace period for novelty are further relaxed, and which are brought into the academic or technical conferences convened by international organizations recognized by the relevant departments of The State Council, and it is convenient for applicants to submit relevant supporting documents. To encourage innovative entities to attend international academic and technical exchanges. The specific revisions include R33.

In conjunction with the above legal provisions, the following practical guidance could be considered in requesting a grace period for novelty:

Ø  The grace period for novelty is the remedy for the applicant's own first disclosure of the technical schemes, and the applicant should still apply for a patent before the technical schemes are published as far as possible to prevent others from applying first;

Ø  The recognition of academic or technical conferences is not limited to domestic conferences recognized by the relevant department of The State Council, but also includes meetings held by recognized international organizations, such as international communication standards conferences, etc., providing remedy for the disclosure of technical schemes of international conference and relevant technical standards formulation;

Ø  When submitting relevant supporting documents, it is not limited to be issued by the relevant organizational unit, but also relaxed for applicants to submit the documents with time information, such as the exhibition brochure, the participation agenda and related technical information.

3. Optimizing the priority system (R35-37, R45, R128)

3.1 Introduce the provisions on national priority for design (R35)

The national priority system for inventions and utility models was introduced when the Patent Law was first revised in 1992. When the Patent Law was revised for the fourth time, the national priority system for designs is introduced. The national priority system for design has solved the problem that domestic designers and foreign designers are not equal to the priority system.

In this revision to Implementation Regulations of Patent Law, the newly introduced national priority system for design has been further elaborated, and two types of specific situations in which the invention or utility model as the prior application and the design as the prior application have been clarified. The specific revisions include R35.

In conjunction with the above legal provisions, the following practical guidance could be considered when applying the national priority system for design:

Ø  A design application claims national priority, the basis of which may be the application for invention, utility model or design patent;

Ø  If the priority is based on invention or utility model, the design application must be filed on the basis of the drawings and should not on the basis of the content recorded in the text thereof;

Ø  Similar to the national priority for invention or utility model, if a design application is filed by claiming priority of a prior design application, the prior design application will be deemed withdrawn;

Ø  If the priority is based on invention or utility model, the prior invention or utility model application will not be deemed withdrawn, because there is no duplication of grant.

3.2 Introduce the relevant provisions for restoring priority (R36, R128)

In order to be more conducive to the patent protection of innovative entities, and to maintain consistency with the priority restoration system in international treaties, this revision to Implementation Regulations of Patent Law introduces priority restoration system. The specific additions include:

R36 - Priority restoration system for general national applications

R128 - Applicability of priority restoration for PCT applications

In conjunction with the above legal provisions, the following practical guidance could be considered for applying the priority restoration system:

Ø  For general Chinese national applications, if the priority has exceeded the 12-month period, the applicant may request the priority restoration within the 12-14 month period;

Ø  For PCT international applications, if the filing date is within 2 months of the expiration date of the priority, the priority can be restored. Specifically, in the international phase, if the receiving office has approved the restoration of priority, a request for restoring priority for the national phase is deemed to have been made; If the receiving office rejects to restore the priority or the applicant does not file a request for the priority restoration, it can make another request for priority restoration within 2 months from the date of Chinese national phase entry.

3.3 Introduce the relevant provisions for adding and correcting priority (R37)

In practice, it is often the case that applicants fill in the wrong specific information when claiming the priority or even omit the priority. In order to facilitate the applicants to add or correct the priority, this revision to Implementation Regulations of Patent Law introduces a new system of adding and correcting priority. The specific revisions include R37.

In conjunction with the above legal provisions, the following practical guidance could be considered for applying the system of adding and correcting priority:

Ø  The prerequisite for applying this regulation is that the applicant must have qualified priority, and it cannot be from restoration, that is, this rule cannot be used in combination with R36;

Ø  The applicant can either amend the priority information originally filled incorrectly or add new priority information, but cannot change the priority from not claiming to claiming;

Ø  The maximum time limit for adding or correcting the priority is 16 months from the priority date or 4 months from the filing date.

3.4 Incorporation by reference system (R45)

If the application submitted by the applicant claims the priority, but some of the application documents are missing or mishanded due to negligence at the time of filing, it can supplement the application documents through incorporation by reference, using the content recorded in the priority documents. For the system of incorporation by reference, the specific contents include R45.

In conjunction with the above legal provisions, the following practical guidance could be considered for applying the system of incorporation by reference:

Ø  The system is not applicable to the situation of R36 and R37, that is, it cannot be used in combination with R36 and R37;

Ø  The system of incorporation by reference is not applicable to the divisional application;

Ø  The incorporation by reference can request within two months from the date of filing or within the time limit designated by the patent administration department under The State Council. After the time limit, the priority cannot be restored.

4. Optimizing the patent application process (R2, R4, R20, R26, R49, R62-63)

4.1 Make it clear that electronic form is regarded as written form (R2)

In order to standardize the submission by electronic form and clarify the internal relationship between electronic form and written form, corresponding revisions have been made in this revision to Implementation Regulations of Patent Law. The specific contents include R2.

4.2 Optimize the provisions for submitting various documents by electronic form (R4)

In order to distinguish the submission of electronic applications and paper applications, the relevant contents of electronic forms are stipulated in this revision to Implementation Regulations of Patent Law. For various documents submitted by electronic form, the date of entering the electronic system recognized by the parties is deemed as the date of service. Also, the expression of the provisions on the date of service for paper documents are revised more complete and rigorous. The specific contents include R4.

In conjunction with the above legal provisions, the following practical guidance could be considered for using the electronic application method:

Ø  Electronic application is different from paper application. 15th day after the date of issuance is no longer regarded as the day of service, but the date of entry into the electronic system.

Ø  For the paper application, the date of service is 15 days after the date of issuance. However, if the relevant documents are not received within 15 days due to various reasons, and there is evidence to prove the actual date of receipt, such as the date of document receipt, the actual date of receipt is deemed as the date of service.

4.3 The starting date of the time Limit (R5)

In order to be more rigorous and clear for the starting date, in the Implementation Regulations of Patent Law, specifying the date on which various terms start is not counted in the term, and the calculation starts from the next day. The specific contents include R5.

4.4 Clarify the circumstances for the restoration of right (R6)

In order to better protect the interests of patent applicants, in the Implementation Regulations of Patent Law, the right restoration of patent in re-examination requests is clarified, so as to be more consistent with practical operations. The specific contents include R6.

In conjunction with the above legal provisions, the following practical guidance could be considered for missing the deadline for re-examination request:

Ø  The effective time for rejection decision is legal time limit, and there is no additional notice from the patent administration department under The State Council. If the applicant misses the time limit of the request for re-examination, he may, within 2 months from the date of expiration of the time limit for requesting re-examination, that is, the date on which the decision of rejection takes effect, request to restoration of right.

4.5 Confidentiality Examination (R9)

In order to enable the applicant to know the result of the confidentiality examination in expect and timely, the time limit for issuing the notice of the confidentiality examination to the applicant and making the confidentiality decision is shortened to 2 months and 4 months respectively in the Implementation Regulations of Patent Law, and can be extended for 2 months only for complicated cases. The specific contents include R9.

4.6 Simplify the form of application documents (R17)

In order to be consistent with the electronic application form, the form requirements for application documents have been simplified in the Implementation Regulations of Patent Law. The specific contents include R17.

4.7 Sequence listing (R20)

The sequence listing is a special form of the patent application document in a special field, and it does not need to be detailed in the Implementation Regulations of Patent Law. Therefore, the relevant provisions of the submission of the sequence listing are deleted. The specific contents include R20.

In conjunction with the above legal provisions, the following practical guidance could be considered for submitting sequence listing:

Ø  It can be processed according to the relevant requirements of the Announcement on the Standard for Adjusting the Electronic File of nucleotide or amino acid sequence listing (No. 485) issued by the CNIPA on June 10, 2022.

4.8 Designate abstract drawing (R26)

In order to reduce the burden on the applicant and improve the efficiency and quality of the examination, the provisions on the size and clarity of the drawings are deleted, and the provisions on abstract drawing are deleted. The specific contents include R26.

In conjunction with the above legal provisions, the following practical guidance could be considered for the submission of abstracts and drawings:

Ø  The text part of the abstract is no longer limited to 300 words;

Ø  The abstract drawing no longer need to be submitted separately, but only need to be specified in the request document;

Ø  The lines of the drawings should be clear, the size should be moderate, and there is no need to meet specific size request.

4.9 Optimize the requirements for submitting relevant copies of divisional application (R49)

In view of the current popularity of electronic applications, copies of the original application and priority copies of the original application for division application can be viewed in the electronic system. If the priority of the original application is a foreign application, copies can also be obtained through the WIPO DAS, so there is no need for the applicant to submit a copy. Therefore, the requirement to submit a copy of the original application is deleted in the Implementation Regulations of Patent Law. The specific contents include R49.

4.10 Optimize patent rights evaluation report system (R62, R63)

In order to meet the practical needs of patent infringement disputes, in the fourth revision of the Patent Law, the allowable entity for requesting patent rights evaluation report is expanded, and the accused infringer is included, that is, the entities that can request the patent rights evaluation report includes the patentee, interested parties or the accused infringer.

In order to implement the above provisions in the Patent Law, in the Implementation Regulations of Patent Law, the entity requesting the patent rights evaluation report, the request time and the time limit for making the patent rights evaluation report are specified in detail. The specific contents include:

R62 – The entity and time for requesting patent rights evaluation report

R63 – The time limit for making patent rights evaluation report

In conjunction with the above legal provisions, the following practical guidance could be considered for patent rights evaluation report:

Ø  The accused infringer, as a potential accused infringement object, can be the entity for requesting the patent rights evaluation report;

Ø  The time in patent right registration procedures to be added as the time to request the patent rights evaluation report;

Ø  For the situation of requesting patent rights evaluation report when applying for patent right registration, the patent rights evaluation report is made within 2 months from the date of publishing the patent, rather than 2 months from requesting.

4.11 Addition and deletion of information for patent register and patent bulletin (R106, R107)

In order to optimize the record of patent information, facilitate the public to understand patent-related information, and provide a good basis for patent analysis, the patent register and patent bulletin information have been adjusted in the Implementation Regulations of Patent Law, and the specific contents include R106 and R107.

4.12 Relevant provisions on payment of fees (R110, R111, R114, R117)

Chapter 10 of the Implementation Regulations of Patent Law stipulates the types of fees, the time of payment, the method of payment, and the consequences of non-payment. In recent years, in order to further reduce the burden of enterprises, some fees have been reduced, so the corresponding fees are deleted in this revision, and the specific requirements on payment methods are deleted. In addition, it is specified that the related fees of patent application are administrative fees, and are adjusted in accordance with the relevant provisions. The specific contents include R110, R111, R114 and R117.

4.13 The publication of PCT, the application of provisional protection (R132)

Article 13 of the Patent Law stipulates provisional protection rules for patent applications, that is, after the publication of the invention application, the applicant may require the entity or individual who implementing the invention to pay the appropriate fee. For PCT international applications filed in Chinese, there are cases where the national publication date is earlier than the international publication date. If the international publication date is still used as the starting date of the provisional protection, there will be a loss for the applicant. The starting date of the provisional protection in this case is specified in the Implementation Regulations of Patent Law. The specific contents include R132.

In conjunction with the above legal provisions, the following practical guidance could be considered for the calculation of the period of provisional protection for international applications claiming invention patent rights:

Ø  For international applications filed in Chinese only;

Ø  Between the international publication date and the national publication date, the earlier date shall be taken as the starting date of the provisional protection period of the patent application.