The Patent Law was first promulgated in 1984 and was amended twice thereafter. The third round of amendments to the patent law was submitted to the Standing Committee of the National People's Congress on 25 August 2008.
The proposed amendments cover issues ranging from the registration of design patents to administrative and civil court enforcement actions. However, the two changes most important for foreign companies concern the "first filing rule" and provisions on prior art.
The current patent law stipulates that Chinese entities (which include foreign invested companies) shall file a PRC-made invention with the State Intellectual Property Office ("SIPO") first, before registering the same overseas. Since this rule does not provide for any penalties, foreign invested companies often transferred their rights in inventions to their (foreign) parent companies. Initially, it appeared that the PRC government wanted to strengthen the current provisions in the patent law and stipulate that violation of the rule would result in refusal of SIPO to patent a PRC-made invention in the PRC if it had been registered in a foreign country without prior approval from SIPO. However, it appears now that the rule has been scrapped, and that PRC-made inventions will be allowed to be filed abroad before filing the same in the PRC.
The other important change to the patent law is the evaluation of prior art. Under the current patent regime, prior art includes information in publications worldwide, public usage in the PRC and other means of disclosure in the PRC. The proposed amendment to the patent law will likely create an absolute standard, and prior art will then include worldwide use, worldwide publications and other means of disclosure (worldwide).
Overall, the amendments to the patent law will improve patent protection in the PRC and will provide for patent registration and enforcement terms that are generally on par with other international patent registration and enforcement procedures.
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