To print this article, all you need is to be registered or login on Mondaq.com.
China's National People's Congress has approved theFourth Amendment to Chinese Patent Law on October 17, 2020. Theamended law will be effective from June 1, 2021. We also expectthat the Implementing Regulations of the Chinese Patent Law and thePatent Examination Guidelines will also be amended accordingly,before the effective date of the amended law. These regulations andrules will provide more explanation and details regarding theAmendment.
Although the approved version of the Fourth Amendment issomewhat different from the previous versions, we do not think itis necessary to discuss these differences. Rather, we will discusskeys changes in the approved version as compared to the currentlaw. We haveparaphrased and highlighted inblue the key changes below,followed by ourcomments in black.
Article 2.4 Partial designs will be allowed.
A much welcomed change. It will provide flexibility to allapplicants and much convenience to applicants from countries wherepartial designs are allowed.
Article 15.2 For service-inventions, the state encouragesemployers to implement ownership incentives and adopt means such asequities, options, and profit sharing, etc., to allow the inventorsto reasonably share the benefits of innovation.
Although the provision is only an "encouragement",rather than a requirement, we do not think that it is necessary orproper. We think that the employers should be left freely, withinthe boundary of law, to decide on how to reward and remunerate theinventors. We look forward to more details.
Article 20.1 In exercising the application or patent right, oneshould follow the principle of honesty and credibility, but shallnot abuse the right to harm public interest or other'slegitimate rights.
We think that the stated principle is appropriate, but lookforward to further interpretation and details.
20.2 Abusing patent right, excluding or restricting competition,if constituting monopolistic conduct, shall be treated according toAnti-Monopoly Law of China.
This provision corresponds with the Anti-Monopoly Law.
Article 24.1 (1) Newly added exception to novelty-defeatingdisclosures: Disclosures made within 6 months of application dateand for public interest purposes during national emergency orextraordinary situation.
We think that a typical example of the exception would be forsomeone to publish a research paper regarding treatment or vaccinefor the corona virus before filing the relevant patent application,but look forward to further interpretation and details.
Article 29 Applicant may claim priority to its own first-filedChinese design patent application within six (6) months of thefirst filing and for the same subject matter.
Applicant can already do so in invention and utility modelpatent applications.
Article 42.1 Design patent term will be extended to fifteen (15)years, from the current ten (10) years.
It is generally believed that this provision will help clear theway for China to join the Hague Agreement, which other majorcountries have all joined.
42.2 For patents granted after four (4) years since applicationdate and three (3) years since request for substantive examination,applicant may request for patent term extension on the basis ofunreasonable delays during prosecution of the patent, except fordelays caused by the applicant.
We look forward to further details.
42.3 In order to compensate for time used for new drugevaluation and approval, the term of a relevant patent for anapproved new drug in China may be extended by up to five (5) yearsupon request by patentee. However, after the new drug entersmarket, the total remaining term of the relevant patent may notexceed fourteen (14) years.
A much welcomed provision for the pharmaceutical industry. Welook forward to further details.
Articles 50 52 Provisions regarding Open PatentLicenses, setting out mechanisms and procedures whereby patentowners can publish, through the CNIPA, their intentions to licensetheir patents to any interested party. Annuities will be reduced orwaived during the license period.
The provisions will help to further commercialize Chinesepatents. We look forward to more details.
Article 66.2 In an infringement action involving a utility modelor design patent before court or administrative agency, all partiescan submit the Patentability Assessment Report on their own.Currently only the patentee and interested party can do so uponrequest by court.
The report will be more important when enforcing utility modelor design patents.
Article 70.1 CNIPA, at the request of patentee or interestedparty, may handle patent infringement disputes that havesignificant impact nationwide.
We think this is an inappropriate enlargement of the CNIPA'sauthority and jurisdiction, but look forward to more details.
70.2 Patent administrative authority of a local government, atthe request of patentee or interested party to handle patentinfringement disputes, may combine cases involving the same patentwithin its jurisdiction. The authority may also request a higherlevel local government authority to handle cases involving the samepatent across different jurisdictions.
This is further streamlining of the administrativeauthority's handling of patent disputes.
Article 71.1 Patentee's loss and infringer's gain aretreated equally as basis for determining damage amounts.
This provides more option/freedom to the patentee in provingdamage amounts.
71.1 In case of willful infringing act, if the circumstances aresevere, the court may set the amount of damages to be one (1) tofive (5) times of the determined amount.
While this may provide more deterrence, it could also beexcessive.
71.2 Statutory damage amount will be under RMB 5 million (aboutUS$715,000). Currently the amount is under RMB 1 million.
A much welcomed change as damage amounts in most cases are stilldetermined based on the statutory amount.
71.4 In order to determine the amount of damages, if theplaintiff has done everything within its ability and the relevantaccount books and materials are mainly under the infringer'scontrol, the court may order the infringer to provide such accountbooks and materials. If the infringer does not provide or providefalse account books or materials, the court may determine thedamage amount by considering the plaintiff's request andevidence.
This will make it easier for the patentee to prove the damageamount.
Article 74.1 Statute of limitation for filing infringementlawsuit is three (3) years (currently two years) from when patenteeknew or should have known the infringement action and theinfringer.
This is in line with China's civil procedure law.
Article 76.1 During administrative review and approval for adrug, the party seeking drug approval and the patentee of arelevant patent may initiate legal proceeding with the court todetermine whether the drug falls within the protection scope of thepatent. The drug regulatory agency, within a specified period oftime, may decide whether to suspend the drug review and approvalprocess based on an effective judgment by the court.
This generally sets up a mechanism for settling patent disputesin drug regulatory review and approval process. But there are manydetails that will need to be clarified.
76.2 The parties may also request the CNIPA to make anadministrative decision regarding the patent dispute.
This is an enlargement of the CNIPA's jurisdiction. We lookforward to more details.
76.3 The Drug Regulatory Authority and the CNIPA will formulatespecific linkage methods regarding drug marketing approval andpatent dispute resolution during the approval period.
We look forward to more details.
As can be seen, the Fourth Amendment introduced a number ofmajor changes to the Chinese Patent Law. At the same time, theimplementation of these changes will largely depend oninterpretation and further details regarding the provisions. Welook forward to the corresponding Implementing Regulations by theState Council and the Patent Examination Guidelines by the CNIPA inthe coming months. We will keep you informed.
The content of this article is intended to provide a generalguide to the subject matter. Specialist advice should be soughtabout your specific circumstances.
- Protections for e-data clear Senate committee [Last Updated On: April 26th, 2014] [Originally Added On: April 26th, 2014]
- Quinn: Supreme Court should clarify Fourth Amendment rights in the digital age [Last Updated On: April 26th, 2014] [Originally Added On: April 26th, 2014]
- Fourth amendment | Wex Legal Dictionary / Encyclopedia ... [Last Updated On: April 26th, 2014] [Originally Added On: April 26th, 2014]
- Fourth Amendment to the United States Constitution ... [Last Updated On: April 26th, 2014] [Originally Added On: April 26th, 2014]
- The Fourth Amendment is destroyed by the Roberts led Supreme Court. - Video [Last Updated On: April 26th, 2014] [Originally Added On: April 26th, 2014]
- Court may let cops search smartphones [Last Updated On: April 28th, 2014] [Originally Added On: April 28th, 2014]
- Supreme Court to hear case on police searches of cellphones [Last Updated On: April 28th, 2014] [Originally Added On: April 28th, 2014]
- Fourth Amendment in the digital age: Supreme Court to decide if police can search cellphones without a warrant [Last Updated On: April 30th, 2014] [Originally Added On: April 30th, 2014]
- What Scalia knows about illegal searches [Last Updated On: April 30th, 2014] [Originally Added On: April 30th, 2014]
- Should police be allowed to search your smartphone - Video [Last Updated On: April 30th, 2014] [Originally Added On: April 30th, 2014]
- Fourth Amendment to the United States Constitution - Video [Last Updated On: May 1st, 2014] [Originally Added On: May 1st, 2014]
- Rand Paul Third Party Records Should Get Fourth Amendment Protection O'Reilly Factor 6 11 2013 - Video [Last Updated On: May 1st, 2014] [Originally Added On: May 1st, 2014]
- The Shaky Legal Foundation of NSA Surveillance on Americans [Last Updated On: May 2nd, 2014] [Originally Added On: May 2nd, 2014]
- Pennsylvania Supreme Court rules police don't need warrants to search cars [Last Updated On: May 3rd, 2014] [Originally Added On: May 3rd, 2014]
- Local police: Updated vehicle-search law still requires probable cause [Last Updated On: May 3rd, 2014] [Originally Added On: May 3rd, 2014]
- Liberal Supreme Court Justice Comes To The Defense Of Scalia [Last Updated On: May 3rd, 2014] [Originally Added On: May 3rd, 2014]
- Gerald Celente - Trends In The News - America's Spiritual Death - (1/20/14) - Video [Last Updated On: May 4th, 2014] [Originally Added On: May 4th, 2014]
- Smartphones and the Fourth Amendment - Video [Last Updated On: May 4th, 2014] [Originally Added On: May 4th, 2014]
- Fourth Amendment Searches And Seizures - Video [Last Updated On: May 5th, 2014] [Originally Added On: May 5th, 2014]
- Fourth Amendment Defined & Explained - Law [Last Updated On: May 6th, 2014] [Originally Added On: May 6th, 2014]
- Enforcement Techniques For Violations Of The Fourth Amendment - Video [Last Updated On: May 6th, 2014] [Originally Added On: May 6th, 2014]
- I-Team: Do police seek search warrant friendly judges? [Last Updated On: May 7th, 2014] [Originally Added On: May 7th, 2014]
- Is Big Brother Listening? Applying the Fourth Amendment in an Electronic Age - Video [Last Updated On: May 9th, 2014] [Originally Added On: May 9th, 2014]
- It Costs Less to Care [Last Updated On: May 10th, 2014] [Originally Added On: May 10th, 2014]
- The Fourth Amendment - Video [Last Updated On: May 10th, 2014] [Originally Added On: May 10th, 2014]
- Magistrate waxes poetic while rejecting Gmail search request [Last Updated On: May 11th, 2014] [Originally Added On: May 11th, 2014]
- License reader lawsuit can be heard, appeals court rules [Last Updated On: May 15th, 2014] [Originally Added On: May 15th, 2014]
- Seize the Rojo - Video [Last Updated On: May 16th, 2014] [Originally Added On: May 16th, 2014]
- NSA Spying Has a Disproportionate Effect on Immigrants [Last Updated On: May 17th, 2014] [Originally Added On: May 17th, 2014]
- Motorists sue Aurora, police in 2012 traffic stop after bank robbery [Last Updated On: May 17th, 2014] [Originally Added On: May 17th, 2014]
- Judge Says NSA Phone Surveillance Likely Unconstitutional - Video [Last Updated On: May 21st, 2014] [Originally Added On: May 21st, 2014]
- New York Attorney Heath D. Harte Releases a Statement on Fourth Amendment Rights [Last Updated On: May 22nd, 2014] [Originally Added On: May 22nd, 2014]
- Bangor Area School District teachers vote no to random drug [Last Updated On: May 24th, 2014] [Originally Added On: May 24th, 2014]
- The Fourth Amendment Rights - Video [Last Updated On: May 24th, 2014] [Originally Added On: May 24th, 2014]
- I Don't Care About The Contitution, Take Your Fourth Amendment And Shove It The Hills Hotel - Video [Last Updated On: May 27th, 2014] [Originally Added On: May 27th, 2014]
- Lonestar1776 at Illegal Checkpoint 80 Miles Inside Border - Standing UP & Pushing Back! pt 2/2 - Video [Last Updated On: September 1st, 2014] [Originally Added On: September 1st, 2014]
- Suit charges Daytona Beach's rental inspection program violates civil rights [Last Updated On: September 2nd, 2014] [Originally Added On: September 2nd, 2014]
- 4th Amendment - Laws.com [Last Updated On: September 6th, 2014] [Originally Added On: September 6th, 2014]
- YOU CAN ARREST ME NOW (cops refuse) - Video [Last Updated On: September 6th, 2014] [Originally Added On: September 6th, 2014]
- The Feds Explain How They Seized The Silk Road Servers [Last Updated On: September 8th, 2014] [Originally Added On: September 8th, 2014]
- Defence asks judge in NYC to toss out bulk of evidence in Silk Road case as illegally obtained [Last Updated On: September 9th, 2014] [Originally Added On: September 9th, 2014]
- Volokh Conspiracy: Does obtaining leaked data from a misconfigured website violate the CFAA? [Last Updated On: September 9th, 2014] [Originally Added On: September 9th, 2014]
- Family of a mentally ill woman files lawsuit against San Mateo Co. after deadly shooting [Last Updated On: September 10th, 2014] [Originally Added On: September 10th, 2014]
- Minnesota Supreme Court upholds airport drug case decision [Last Updated On: September 12th, 2014] [Originally Added On: September 12th, 2014]
- Law Talk - Obamacare Rollout; Fourth Amendment, NSA Spying Stop & Frisk DUI Check Points lta041 - Video [Last Updated On: September 12th, 2014] [Originally Added On: September 12th, 2014]
- Volokh Conspiracy: The posse comitatus case and changing views of the exclusionary rule [Last Updated On: September 15th, 2014] [Originally Added On: September 15th, 2014]
- Guest: Why the privacy of a public employees cellphone matters [Last Updated On: September 16th, 2014] [Originally Added On: September 16th, 2014]
- Volokh Conspiracy: Apples dangerous game [Last Updated On: September 19th, 2014] [Originally Added On: September 19th, 2014]
- Judge expounds on privacy rights [Last Updated On: September 20th, 2014] [Originally Added On: September 20th, 2014]
- Great privacy essay: Fourth Amendment Doctrine in the Era of Total Surveillance [Last Updated On: September 20th, 2014] [Originally Added On: September 20th, 2014]
- The Fourth Amendment By Maison Erdman - Video [Last Updated On: September 20th, 2014] [Originally Added On: September 20th, 2014]
- Volokh Conspiracy: When administrative inspections of businesses turn into massive armed police raids [Last Updated On: September 22nd, 2014] [Originally Added On: September 22nd, 2014]
- The chilling loophole that lets police stop, question and search you for no good reason [Last Updated On: September 23rd, 2014] [Originally Added On: September 23rd, 2014]
- E.O. 12333: End-Running the Fourth Amendment | The Dissenter [Last Updated On: September 25th, 2014] [Originally Added On: September 25th, 2014]
- Fourth Amendment: The History Behind "Unreasonable ... [Last Updated On: September 25th, 2014] [Originally Added On: September 25th, 2014]
- Pet Owners Look to Muzzle Police Who Shoot Dogs [Last Updated On: September 27th, 2014] [Originally Added On: September 27th, 2014]
- Volokh Conspiracy: A few thoughts on Heien v. North Carolina [Last Updated On: September 29th, 2014] [Originally Added On: September 29th, 2014]
- Volokh Conspiracy: Third Circuit on the mosaic theory and Smith v. Maryland [Last Updated On: October 1st, 2014] [Originally Added On: October 1st, 2014]
- Volokh Conspiracy: Third Circuit gives narrow reading to exclusionary rule [Last Updated On: October 2nd, 2014] [Originally Added On: October 2nd, 2014]
- Volokh Conspiracy: Supreme Court takes case on duration of traffic stops [Last Updated On: October 2nd, 2014] [Originally Added On: October 2nd, 2014]
- Search & Seizure, Racial Bias: The American Law Journal on the Philadelphia CNN-News Affiliate WFMZ Monday, October 6 ... [Last Updated On: October 4th, 2014] [Originally Added On: October 4th, 2014]
- Argument preview: How many brake lights need to be working on your car? [Last Updated On: October 4th, 2014] [Originally Added On: October 4th, 2014]
- The 'Barney Fife Loophole' to the Fourth Amendment [Last Updated On: October 4th, 2014] [Originally Added On: October 4th, 2014]
- Search & Seizure: A New Fourth Amendment for a New Generation? - Promo - Video [Last Updated On: October 4th, 2014] [Originally Added On: October 4th, 2014]
- Lubbock Liberty Workshop With Arnold Loewy On The Fourth Amendment - Video [Last Updated On: October 5th, 2014] [Originally Added On: October 5th, 2014]
- Ap Government Fourth Amendment Project - Video [Last Updated On: October 5th, 2014] [Originally Added On: October 5th, 2014]
- Volokh Conspiracy: Oral argument in Heien v. North Carolina [Last Updated On: October 6th, 2014] [Originally Added On: October 6th, 2014]
- Feds Hacked Silk Road Without a Warrant? Perfectly Legal, Prosecutors Argue [Last Updated On: October 7th, 2014] [Originally Added On: October 7th, 2014]
- Supreme Court Starts Term with Fourth Amendment Case [Last Updated On: October 7th, 2014] [Originally Added On: October 7th, 2014]
- Feds Say That Even If FBI Hacked The Silk Road, Ulbricht's Rights Weren't Violated [Last Updated On: October 8th, 2014] [Originally Added On: October 8th, 2014]
- Argument analysis: A simple answer to a deceptively simple Fourth Amendment question? [Last Updated On: October 8th, 2014] [Originally Added On: October 8th, 2014]
- Mass Collection of U.S. Phone Records Violates the Fourth Amendment - Video [Last Updated On: October 8th, 2014] [Originally Added On: October 8th, 2014]
- Leggett sides with civil liberties supporters [Last Updated On: October 10th, 2014] [Originally Added On: October 10th, 2014]
- Search & Seizure / Car Stops: A 'New' Fourth Amendment for a New Generation? - Video [Last Updated On: October 10th, 2014] [Originally Added On: October 10th, 2014]
- Broken Lights And The Fourth Amendment National Constitution Center - Video [Last Updated On: October 10th, 2014] [Originally Added On: October 10th, 2014]
- The Fourth Amendment- The Maininator Period 4 - Video [Last Updated On: October 10th, 2014] [Originally Added On: October 10th, 2014]
- Judge nukes Ulbricht's complaint about WARRANTLESS FBI Silk Road server raid [Last Updated On: October 11th, 2014] [Originally Added On: October 11th, 2014]
- Montgomery County will not hold immigrants without probable cause -- Gazette.Net [Last Updated On: October 13th, 2014] [Originally Added On: October 13th, 2014]
- Debate: Does Mass Phone Data Collection Violate The 4th Amendment? [Last Updated On: October 15th, 2014] [Originally Added On: October 15th, 2014]
- Does the mass collection of phone records violate the Fourth Amendment? [Last Updated On: October 18th, 2014] [Originally Added On: October 18th, 2014]