CNIPA published revised Implementing Regulations of Patent Law and Patent Examination Guidelines

On December 21, 2023, the China National Intellectual Property Administration (CNIPA) published the revised Implementing Regulations of the Patent Law and the Patent Examination Guidelines, which will enter into force as of January 20, 2024. Generally, the revisions are more friendly for patent applicants and intend to strengthen patent protection and promote the utilization of patents. Here are highlights of the revised Implementing Regulations and Examination Guidelines.

Procedures

• Restoration of priority: If an invention or utility model patent application is filed in China within 12~14 months from the priority date, the applicant can request restoration of the priority. This is applicable to situations where 14 months from the earliest priority date is on or after January 20, 2024. For PCT applications, the restoration of priority during the international phase will be recognized in the CN national phase; even if a priority was not restored in the international phase, the applicant can still request the restoration within 2 months from the national entry date. This is applicable to situations where 2 months from the national entry date in China is on or after January 20, 2024.
• Addition or correction of priority claim: Provided that a priority is claimed at the filing, the applicant can file a request for addition or correction of a priority within 16 months from the earliest priority date.
• Incorporation by reference: For applications filed in China via Paris Convention route, the applicant can request incorporation by reference all or part of the description or claims in the priority application within two months from the CN filing date. For PCT applications, the incorporation by reference during the international phase will be recognized in the CN national phase. This is applicable to situations where the national entry date in China is on or after January 20, 2024.
• Patent term adjustment (PTA): The patentee can request PTA within 3 months from the grant date of the patent. PTA equals the number of days between the issue date of the patent and the date of four years from the filing date or three years from the date of requesting substantive examination, whichever is later, minus the CNIPA’s reasonable delay and the unreasonable delay caused by the applicant.
• Grace period without loss of novelty: The conference in which an invention was disclosed without loss of novelty now includes conferences held by international organizations and recognized by relevant authorities of the State Council of China.
• To add or remove inventor(s), a request shall be submitted to the CNIPA within one month from receipt of Official Filing Receipt.
• The applicant can request deferral of examination for invention, utility model and design applications, and can also withdraw the request for deferral of examination. The deferred term can be 1, 2 or 3 years for inventions, 1 year for utility models, and in a unit of month and up to 36 months for designs.
• The drawings can be in colour.
• The 15-day mailing grace period is cancelled for official communications issued electronically on or after Jan. 20, 2024.

Principle of Good Faith

The compliance of the principle of good faith in patent prosecution will be examined in the preliminary examination, in the substantive examination if the examiner has evidence or sufficient reasons, and in the re-examination and invalidation proceedings at the request of petitioner or by the Collegiate Panel ex officio. Violation of the principle of good faith is a reason for rejection and invalidation.

Reward and remuneration for inventors/designers of service inventions/designs

• Reward to inventor/designer of a patent: The minimum reward to the inventor for an invention patent is increased from RMB 3,000 to RMB 4,000, and the minimum reward to the inventor/designer for a utility model or design patent is increased from RMB 1,000 to RMB 1,500, provided that no agreement regarding reward was previously made between the employer and the inventor/designer of a service invention/design.
• Remuneration to inventor/designer of a patent: Provided that no agreement regarding remuneration was previously made between the employer and the inventor/designer, the employer shall award a reasonable remuneration to the inventor/designer of a service invention/design in accordance with the Law of Promoting the Transformation of Scientific and Technological Achievements, which may be much higher than the current Implementing Regulations of the Patent Law.

Computer Implemented Inventions

• Computer program product becomes eligible subject matter, which can cover software distributed online since a tangible medium is not required.
• Method involving diagnosis with all steps performed by a computer is eligible subject matter.

Pharmaceutical Patents

Patent Term Extension (PTE) is available to product patents, preparation method patents and medical use patents of the active pharmaceutical ingredient (API) contained in a “new drug”. PTE = (China marketing approval date – the filing date of the Chinese patent) – 5 years. The maximum PTE is 5 years and the resulting total effective patent term after drug approval for marketing shall not exceed 14 years.

Designs

• Partial design is not patentable if it does not form a relatively independent portion of a product or constitute a relatively complete design unit. Partial design is also not patentable if it is only a design of a pattern, or combination of a pattern and color, on the surface of a product.
• Applicant can file a GUI design application as whole design application or partial design application. A part of GUI can also be protected as a partial GUI design. The hardware product can be shown or not shown if a GUI design is filed as a partial design application.
• International design applications through the Hague Agreement are applicable in China as China acceded to the Hague Agreement in 2022.

Open License

The patentee can make a statement of open license to the CNIPA if the patentee is willing to grant license to anyone at a stated royalty for the pantentee’s granted patent. If anybody informs the patentee in writing that they are willing to implement its open-licensed patent and pays the license fee, the open license contract is established and becomes effective. Either the licensor or the licensee can register the effective open license contract with the CNIPA. During the period of the open license contract registered with the CNIPA, the annuity of the patent can be reduced accordingly.