Outline of fourth amendments of Chinese patent law
Effective date: June 1, 2021
1. Broader scope of protection for design patents
New amendments allow protection of partial designs.
2. Introduction of domestic benefit of design applications
A later Chinese design application, if filed within 6 months from the filing date of a previous Chinese design application, may enjoy a domestic benefit from it.
3. Longer patent term for design patents
The term of a design patent, previously 10 years from date of issuance, is extended to 15 years.
4. Promoting exploitation and utilization of service invention
New amendments encourage using equities, share options, dividends, and the like to share benefits with inventors or designers in a reasonable way.
5. Introducing principle of good faith
Applying for a patent or enforce a patent right shall follow the principle of good faith. Abusing a patent right to damage the public interest or to conflict with prior legitimate rights of others is not allowed.
6. Patent Evaluation Report can be requested by accused infringer
A patentee, an interested party (such a licensee), or an accused infringer can request a patent evaluation report from the Chinese Patent Office. This applies to patents issuing on applications filed before June 1, 2021.
7. Up to five times penalty for counterfeiting patents
A fine of not more than five times the illegal income could be imposed for counterfeiting a patented article or material.
8. Increasing compensation for patent infringement
For willful patent infringement, if the circumstances are serious, the amount of compensation for damage may be determined from one time to five times of the damages. The amount of statutory damages are increased from RMB 10k (about USD1,566) ~ RMB 1 million (about USD 156,661) to RMB 30k (USD4,700) ~ RMB 5 million (about USD783,306).
9. Alleviating burden of proof
If a patentee has tried its best to provide evidence for damages, a court may order the infringer to provide the account books and information related to the infringement. If the infringer does not provide it or if false accounting books or materials are provided, the court may determine the amount of compensation based on the claims of the patentee and the evidence provided.
10. Extended statute of limitations for patent infringement
The statute of limitations for patent infringement is extended from two years to three years.
11. Introducing pre-lawsuit preservation
If a patentee or interested party has evidence to prove that another person is committing or is about to commit an act that infringes the patent right and hinders its realization, if it would cause irreparable damage to their lawful rights and interests, it may apply to a court for property preservation, order certain actions, or prohibit certain actions before proceeding.
12. Patent term extension for invention patents
If the patent right is issued for an invention after four years from the date of filing and three years from the date of requesting substantive examination, the patentee may request for a compensation for the patent term if the delay is not caused by the applicant.
The request shall be filed within three months from the issue date.
13. Adding one more circumstance for grace period of novelty
The amendments add one more exception for loss of novelty, which is for inventions first disclosed for the purpose of public interest when a national emergency or extraordinary state of affairs occurs.
14. Add special provisions on drug marketing approval
For the first time, a patent dispute during the process of review and approval of drug marketing has been specified.
If a dispute arises between the applicant for drug marketing authorization and the relevant patentee or interested party due to the patent right of the drug applied for registration, the relevant party may file a lawsuit with a court or request the Chinese Patent Office to make a judgment on whether the drug-related technical solution applied for registration falls within the scope of protection of the patent right of others’ drugs. The drug regulatory department of the State Council may, within the prescribed time limit, make a decision on whether to suspend the approval of the listing of relevant drugs based on the effective judgment of the court.
15. Patents open for licensing
A patentee can inform the Chinese Patent Office that it is willing to license a patent with licensing terms specified.
16. Extended time limit for submitting certified copy of priority document
A certified copy of priority document for an invention patent application or utility model application shall be submitted within 16 months (compared with three months from the Chinese filing date) from the date on which the patent application for invention or utility model was first filed.
