The fourth revision of the Chinese Patent Law (Revised in 2020) came into effect on June 1, 2021. About two and a half years later, the accompanying revised Implementing Regulations of the Patent Law and the Patent Examination Guidelines were finally promulgated and came into effect on January 20, 2024. There are many revisions and new additions in the Implementing Regulations of the Patent Law and the Patent Examination Guidelines, which concern many aspects in the field of grant, validity, and protection of patent rights. It is difficult to summarize all the revisions and additions in one article. In this article, we will only focus on the following aspects: delayed patent examination, patent reexamination procedure, compensation of patent term, patent right evaluation report, examination of obvious inventiveness of utility model patent and obvious difference of design patent. With respect to the other aspects (such as the invalidation procedure of patent, partial design, etc.) that are not mentioned or discussed in detail in this article, please pay attention to other articles published or to be published by Lung Tin.
Due to space limitation, the text of relevant provisions of the Implementing Regulations of the Patent Law and the Patent Examination Guidelines will not be listed in some chapters of this article. Instead, we will only provide the numbers of relevant provisions and chapters for the reference of the readers.
Delayed Patent Examination
On the basis of the original provisions permitting a delay of one year, two years or three years for invention patent applications and design patent applications, the present revisions to the Implementing Regulations of the Patent Law and the Patent Examination Guidelines have perfected relevant provisions on Delayed examination: (1) adding a system for delayed examination of utility model patent applications, which stipulates that the delayed examination of utility model patent applications shall be submitted by the applicant when submitting the patent applications and the period of delay shall be one year from the effective date of the request for delayed examination; (2) changing the unit of the period of delayed examination of design patent applications to months, with a maximum period of delay being 36 months from the effective date of the request for delayed examination; (3) adding a procedure for withdrawing the request for delayed examination, which stipulates that the applicant may request to withdraw the request for delayed examination before the expiry of the stipulated period of delay, and where the request complies with the provisions, the delayed period will be terminated, and the patent applications will be examined in order.
In particular, considering that there is no early publication system for utility model patents similar to that for invention patents, and the term of protection of ten years is obviously shorter than that for the invention patent and the design patent, only one year is set for the delayed examination of the design patent; the unit for the delayed examination of design is adjusted from years to months in order to facilitate the applicant to make a plan for the delayed examination according to the patent application strategy; the added withdrawal procedure increases the flexibility of the applicant's delayed examination strategy to a large extent, the applicant will no longer hesitate to request the delayed examination and to determine the term of the delayed examination, but can apply for a delayed examination as per the maximum term and withdraw the request for a delayed examination at any time according to the development and changes of the market and products, and afterwards the patent application will enter the examination procedure.
It should be noted that the time limit for voluntary amendment of an invention patent application is not extended as a result of a request for a delayed examination. The applicant still needs to within the original time limit, considers the claim layout of the present application that enters the substantive examination, and saves the possibility for the subsequent divisional application(s) (in case the present application is already a divisional application).
Based on the delayed examination procedure and various means of acceleration (patent prosecution highway, prioritized examination, fast pre-examination, early publication), applicants can design application strategies to adapt to the needs of market competition, product iteration, or the standardization process.
Many applicants wish to keep the parent case pending for as long as possible. This can bring about the following advantages:
(1) The applicant may rewrite claims based on the actual situation of market competition, so that the protection scope of the granted claims may cover the products or solutions of its competitors;
(2) The time limit for filing divisional applications based on the parent case can be extended so that divisional applications can be filed as late as possible and the claims can be more targeted. A delayed examination can also be requested for the divisional applications in order to extend the duration of the entire patent family (further divisional applications may also be filed if the divisional applications have unity defects that have been pointed out by the examiners);
(3) Additional time will be available to await the examination results of foreign counterpart applications in order to apply the same or a similar strategy for responding to a Chinese office action in order to save cost and maintain as much consistency as possible in terms of claim scope granted among various jurisdictions;
(4) The applicant may have the opportunity to take advantage of new patent examination policies that may be issued in the future that are more favorable to applicants, such as provisions on the protection of computer storage medium and program product and supplementary experimental data issued in recent years,
(5) Competitors have not been able to determine the scope of protection of the claims that may be granted in a parent case, increasing the difficulty and cost of the design-around attempts;
(6) Whether to continue the prosecution can be decided based on the market performance and prospects of related products and solutions, saving time and financial costs.
To achieve the goal of keeping the parent case pending for as long as possible, for an invention patent application, the applicant may request substantive examination by the three-year deadline from the application date and request a delayed examination of three years. In this way, the invention patent application can be examined as late as possible.
On the basis of the delay of examination of the parent invention patent application, a utility model patent application can be filed on the same day (subject matter of protection is limited), or a divisional application can also be filed as soon as possible with a request for early publication and a request for substantive examination being filed as soon as possible, in order to obtain a granted patent as soon as possible.
In respect of design patents, the granted patent is easy to be copied after being granted publicly, while requesting a delay of examination to ensure the publication of the granted patent after the patented product comes onto the market is an effective way to avoid plagiarism.
As mentioned above, the delay of examination provides more flexibility for applicants to formulate a more targeted application strategy, but the disadvantage is also obvious in that the protection term of the patent will be correspondingly shortened.
The above contents involve Rule 56 of the Implementing Regulations of the Patent Law and Section 8.3 of Chapter 7 of Part 5 of the Patent Examination Guidelines.
Patent Reexamination Procedure
The patent reexamination procedure is a procedure initiated by a patent applicant who is dissatisfied with the rejection decision made during the procedures of preliminary examination and substantive examination and requests for reexamination. Rule 67 of the Implementing Regulations of the Patent Law revised this time promotes the principle of ex officio examination in the reexamination procedure stipulated in the Patent Examination Guidelines, which used to be a department rule, to the level of laws and regulations, and enhances its legal level, reflecting the importance of ex officio examination in the reexamination procedure. It stipulates that "where, after reexamination, the Patent Administration Department under the State Council considers that the request for reexamination is not in conformity with the Patent Law and these Rules, or the patent application is in other obvious violation of the Patent Law and these Rules, it shall notify the petitioner requesting reexamination and require him to submit his observations within a specified time limit." Accordingly, examiners of the Patent Administration Department under the State Council (i.e., the CNIPA) can voluntarily point out other obvious defects not pointed out in the rejection decision in the reexamination procedure, which is helpful to improve the efficiency of examination and the quality of the granted patent, reduce the number of office actions, and avoid the possible repetition of reexamination procedures.
The following provisions are added to the revised Patent Examination Guidelines: apart from the reasons and evidence on which the rejection decision is based, where the collegial panel finds that the application is not in conformity with Rule 11 of the Implementing Regulations of the Patent Law (i.e., the good faith clause), it may review the related reason and evidence. In addition, for "defects of the same nature as those pointed out in the rejection decision" and "other obvious substantive defects not pointed out in the rejection decision" found in the application by the collegial panel, the following cases are added to the Patent Examination Guidelines to better explain how to apply the above-mentioned provisions.
(1) The rejection decision points out that claim 1 does not possess inventiveness compared to reference document 1 and common knowledge in the art. When the additional technical features further defined in the dependent claims 2 to 6 are also common knowledge, and all claims 1 to 6 do not possess inventiveness, the collegial panel points out that claims 1 to 6 are not in conformity with the provision of Article 22, Paragraph 3 of the Patent Law on inventiveness with respect to reference document 1 and common knowledge.
(2) The rejection decision points out that a definition in the technical solution in claim 1 leads to unclear working principle, which is not in conformity with the provision of Article 26, Paragraph 4 of the Patent Law on clarity. When the root of the above problem is the lack of technical means to solve the technical problem in the description, the collegial panel points out that the application is not in conformity with the provision of Article 26, Paragraph 3 of the Patent Law on sufficient disclosure.
(3) The rejection decision points out that claim 1 does not possess inventiveness. When the unclarity of the protection scope of claim 1 affects the accurate identification of the distinctive features in the inventiveness examination, the collegial panel points out that claim 1 is not in conformity with the provision of Article 26, Paragraph 4 of the Patent Law on clarity.
The above case (1) involves the issue of inventiveness. For inventiveness, the revised Patent Examination Guidelines also add the following provisions: for the evidence related to the defects pointed out in the rejection decision, the panel may appropriately adjust its use, for example, change the closest prior art or omit a certain piece of evidence on the basis of the evidence on which the rejection decision is based.
Therefore, with respect to the inventiveness issue, the most commonly raised ground for rejection, the collegial panel may, based on the inventiveness comment combining a reference document and common knowledge used for one claim in the rejection decision, add inventiveness comments based on the combination of this reference document and common knowledge for other claims (i.e., the defects of the same nature as those pointed out in the rejection decision) in the reexamination procedure. The collegial panel may also change the closest prior art within the scope of the pieces of evidence on which the rejection decision is based, or omit a piece of evidence from the evidence combination (for example, the evidence combination in the rejection decision has the problem of hint of combination). Together with the possibility of the addition of inventiveness comments based on common knowledge, the collegial panel's flexibility in comments on the inventiveness issue of the claims in the re-examination procedure will be greatly increased. Of course, this is conducive to improving the efficiency of examination and the quality of the patent granted, but it also brings greater challenges to the reexamination petitioner and reduces the chance of filing observations by one time. It will also make the petitioner, who is not very confident about the prospect of granting, more cautious about whether to file a reexamination request after receiving a rejection decision.
The above cases (2) and (3) facilitate the collegial panel to use provisions more pertinent to the essential defects in the patent application and provisions more consistent with the logic and order of comments, so that the collegial panel can present more reasonable comments compared to the rejection decision, but at the same time, it will also reduce the chance of filing observations by one time.
In addition, in this revision to the Implementing Regulations of the Patent Law, the original Rule 62 which reads "The Patent Reexamination Board shall transfer the written request for reexamination which the Board has accepted to the original examination department of the Patent Administration Department under the State Council for examination. Where the original examination department agrees to revoke its former decision upon the request of the requesting party for reexamination, the Patent Reexamination Board shall make a decision accordingly and notify the requesting party for reexamination" is deleted. Adaptive amendment has also been made to the Patent Examination Guidelines. The original provision that "In accordance with Rule 62 of the Implementing Regulations of the Patent Law, the Patent Reexamination Board shall transfer the written request for reexamination which has passed the formal examination (including the attached supporting documents and the revised application documents) together with the case file to the original examination department which has rejected the patent application for pre-examination. The original examination department shall issue the opinions of pre-examination and issue the office action of pre-examination. Except for special circumstances, the pre-examination shall be completed within one month upon receipt of the case file" is amended to read "the written request for reexamination (including the attached supporting documents and the revised application documents) shall be transferred to the examination department for pre-examination after passing the formal examination, and the examination department shall put forward the opinions of pre-examination."
In practice, if the petitioner for reexamination submits the request for reexamination by providing arguments (the substance of such arguments has already been submitted in the substantive examination) only without revising the application documents according to the suggestions of the examiner who is responsible for the substantive examination, it is usually difficult for the application to pass the pre-examination of the original examination department (the original examiner is usually responsible for the pre-examination). According to the revised Implementing Regulations of the Patent Law and the Patent Examination Guidelines, the authorities carrying out pre-examination will not be limited to the original examination department, which is helpful for more objective examination of application documents, and better plays the role of pre-examination. If more cases pass the pre-examination and the rejection decisions could be thus reversed, the efficiency of the reexamination procedure will undoubtedly be improved.
The above contents involve Rule 67 of the Implementing Regulations of the Patent Law and Sections 3.3 and 4.1 of Chapter 2 of Part 4 of the Patent Examination Guidelines.
Compenstation for Patent Term
The fourth revision of the Patent Law has introduced two types of compensation for patent term, patent term adjustment applicable to all invention patents and patent term extension applicable to invention patents for new drugs. The revised Implementing Regulations of the Patent Law and the Patent Examination Guidelines provide detailed rules for the application and examination of such two types of compensation for patent term. The patentee should note that, the two types of compensation for patent term are not automatic, and both require the patentee to actively request them.
(1) Patent Term Adjustment
The examination cycle of an invention patent application is relatively long, which may shorten the protection term of the patent right actually obtained by the patentee. If there is unreasonable delay in the examination, and such unreasonable delay is not caused by the applicant, it is unfair to burden the patentee with the shortened protection term thus caused. In this regard, Paragraph 2 of Article 42 of the Patent Law provides that where an invention patent right is granted after three years from the date of request for substantive examination of an invention patent and after four years from the date of application for an invention patent, the patentee may request compensation of patent term for any unreasonable delay in grant of the patent for invention, with the exception of any unreasonable delay caused by the applicant.
According to the revised Implementing Regulations of the Patent Law and the Patent Examination Guidelines, when requesting for compensation of patent term, the patentee shall make the request to the CNIPA within three months as of the date of announcement of grant of patent right, and pay the relevant fees; the duration of compensation shall be calculated according to the actual days of unreasonable delay in the grant of the invention patent, which refers to the number of days in the interval between the expiration of four years from the application date of invention patent and the expiration of three years from the date of request for substantive examination of the patent and the date of announcement of grant of patent right, minus the days of reasonable delay and the days of unreasonable delay caused by the applicant, namely:
Patent term adjustment = announcement date of grant - expiration of four years from the application date of invention patent and expiration of three years from the date of request for substantive examination - days of reasonable delay - days of unreasonable delay caused by the applicant
In particular, the "date of application for an invention patent" means the date of filing of a first filing application or an application claiming the right of priority through the Paris Convention, the date of entry into the Chinese national phase for a PCT application, and the date of filing of a divisional application for a divisional application; the "date of request for substantive examination" means the date on which an applicant makes a request for substantive examination and pays the substantive examination fee for an invention patent application in full, and if the date of request for substantive examination of an invention patent application is earlier than the date of publication, the "three-year starting point" shall be counted from the date of publication.
In addition, "days of reasonable delay" shall include: the time used in the whole reexamination procedure if the patent is granted after the application documents are amended in the reexamination procedure; the time used in the suspension procedure initiated due to ownership disputes or the implementation of the preservation of the patent application right or the patent right; and the delay caused by other reasonable circumstances, such as administrative proceedings. While "days of unreasonable delay caused by the applicant" includes: the delay caused by the applicant's failure to respond to notices sent by the CNIPA within the specified time limit, the delay period starting from the expiration date of the time limit and ending on the date when the response is actually submitted; for applications requesting the delayed examination, the days of delay are the days of the actual delay period; if the application documents are submitted by reference and the date of first submission is allowed to be the application date, all time before the date of supplementing the application documents shall be considered as the days of delay; the delay caused by request for rights restoration, the delay period starts from the expiration date of the original time limit and ends on the date when the approval notice on request for rights restoration agreeing to the restoration of rights is issued, unless such delay is proved to be caused by the CNIPA; for an international application which is to go through the formalities for the entry into the national phase in China within 30 months from the priority date, if there is a delay caused by the lack of requesting early processing, the delay period starts from the date of the entry into the national phase in China and ends on the date expiration of 30 months from the priority date.
In recent years, the patent reexamination proceedings and the subsequent administrative litigation proceedings can take a long time, which can take two or more years in some cases. Even if the patent is finally granted, the remaining term of protection is therefore shortened a lot. Compensation for patent term can solve such problems and reduce the applicant's worries when it faces the choice of submitting a request for patent reexamination or administrative litigation.
In addition, it shall be noted that where the same applicant applies for both utility model patent and invention patent for the same invention-creation on the same day, and obtains the invention patent after giving up the utility model patent, the above provisions regarding compensation for patent term shall not apply to the term of the invention patent. However, if the protection scope of the invention patent is different from that of the utility model patent by amendment to the claims of the invention patent, compensation for patent term may be requested in respect of the invention patent.
Where the request for compensation of patent term meets the conditions for such compensation, the CNIPA shall make a decision on granting such compensation, notify the applicant of the number of days for such compensation, make registration and an announcement; where the request does not meet the conditions for compensation, the CNIPA shall give at least one opportunity to the applicant for stating their opinions and/or submitting supplementary documents. Where the request does not meet the conditions for such compensation, the CNIPA shall make a decision on not granting such compensation.
Undoubtedly, the provision of compensation for patent term is very favorable to the patentee. For a patent with long technical life and high commercial value, the extension of patent protection brought about by such compensation may bring great benefits to the patentee. For the general public, as the protection term of some invention patents will exceed 20 years, it will be more challenging for them to implement the freedom-to-operate investigation and investigate the patent infringement risks. Therefore, the general public shall pay close attention to the actual protection terms of relevant patents.
The above contents involve Rule 77, Rule 78, Rule 79 and Rule 84 of the Implementing Regulations of the Patent Law and Section 2.1 to Section 2.4 of Chapter 9 of Part 5 of the Patent Examination Guidelines.
(2) Patent Term Extension of New Drugs
The substantive examination for patent applications related to drug inventions usually takes longer than that for other technical fields, and the marketing of a drug is also subject to lengthy clinical trial and administrative review and approval procedures. Therefore, by the time a drug is officially marketed, there is not much left of its patent protection term. To ensure that the innovator drug companies can have a patent protection term long enough to obtain reasonable profits, the fourth revision of the Patent Law has also introduced the system of extending the protection term of drug patents, i.e., in order to compensate for the time taken to evaluate and approve a new drug to be marketed, the CNIPA may grant period extension for the invention patent of a new drug approved to be marketed in China upon request of the patentee. In the meantime, in order to balance the interests of innovator drug companies, generic drug companies, and the general public, with respect to the time taken to evaluate and approve a new drug, a double restriction shall be imposed, i.e., the period for extension shall not exceed five years and the total valid period of the patent right of the new drug shall not exceed 14 years after the new drug is marketed.
According to the revised Implementing Regulations of the Patent Law and the Patent Examination Guidelines, for innovative drugs and improved new drugs that comply with relevant provisions approved by the Drug Regulatory Department under the State Council to be marketed, the CNIPA may grant, upon the request of the patentee, patent term extension for the drug patents meeting certain requirements, so as to make up for the time taken to evaluate and approve the new drugs within the duration of the patent rights.
Specifically, the improved new drugs for which patent term extension may be granted are limited to the following categories as recorded in the drug registration certificate issued by the Department of Drug Supervision and Administration under the State Council: (1) drugs of known active ingredients in Category 2.1 of chemical drugs that form esters or salts of known active ingredients; (2) chemical drugs of Category 2.4, i.e. drugs for new indications containing known active ingredients; (3) biological products of Category 2.2 for prevention, i.e. vaccines which are improved from vaccine bacterial strain; (4) biological products for therapy, i.e. biological products that add new indications; (5) traditional Chinese medicine of Category 2.3, i.e. traditional Chinese medicine with added functions and indications.
The invention patents related to new drugs refers to the patents of new drug product, preparation methods, and medical use that conform to relevant provisions. The technical solution of a new drug shall be subject to the structure, composition and contents, the production process and indications approved by the Department of Drug Supervision and Administration under the State Council; in the event that the designated claim does not contain the relevant technical solution of the new drug approved to be marketed, no term extension shall be granted. During the term of extension, the protection scope of the drug patent shall be limited to the new drugs approved to be marketed by the Department of Drug Supervision and Administration under the State Council, and shall be limited to the approved technical solution of the new drugs for their indications; within the protection scope, the patentee's rights and obligations shall be the same as those prior to the extension term. The protection scope of the product claims shall be limited to the new drug products marketed for the approved indications. The protection scope of the medical use claims shall be limited to the approved indications of the new drug products marketed for the approved indications. The protection scope of the preparation method claims shall be limited to the production processes of the new drug products marketed for the approved indications filed for record with the Department of Drug Supervision and Administration under the State Council.
The following requirements shall be met in applying for patent term extension of drug patent: (1) the date of announcement of the patent granting for the application for extension shall be earlier than the date of approval of the drug marketing authorization application; (2) the patent right is valid at the time when the application for extension is filed; (3) no patent term extension of has been granted for the drug patent; (4) the claim for which extension of patent term of the drug patent is requested contains the relevant technical solution of the new drug approved to be marketed; (5) where a drug is subject to multiple patents, the patentee can only apply for extension of one of the patents; and (6) where a patent involves several drugs, the patentee can only apply for extension of patent term of one drug. The above provisions further restrict patent term extension of drug patent with the aim of balancing the interests of innovator manufacturers, generic drug manufacturers, and the public.
Where the patentee applies for patent term extension of drug patent, it shall file the application with the CNIPA within three months from the date when the drug is approved to be marketed in China, and pay the relevant fees. For a drug which has obtained conditional marketing authorization, a request shall be filed with the CNIPA within three months from the date when the drug is officially approved to be marketed in China, but the calculation of the extension term shall be subject to the date when the conditional marketing authorization is obtained.
When requesting for patent term extension of the drug patent, the petitioner shall also submit the following materials: (1) Where the patentee and the drug marketing authorization holder are not the same, the petitioner shall submit the written consent of the drug marketing authorization holder and other materials; (2) The relevant technical materials used for determining the scope of patent protection during the term of extension of the drug patent, for example, to request for term of extension of the patent on preparation method, the materials on drug production process approved by the Drug Regulatory Department under the State Council shall be submitted; and (3) Other supporting materials required by the CNIPA. In the request, the petitioner shall specify the drug name, drug registration classification, approved indications and the patent number for which the request for term of extension of the patent is made, specify the claims relating to the new drug for which marketing authorization is obtained, and specify, in combination with the evidentiary documents, that the specified claims include the reasons for the relevant technical solution of the new drug and the calculation basis for the extension term application, and shall specify the technical solution for protection of the drug patent right during the extension term.
After the CNIPA examines the request for patent term extension, if it finds that the request meets the conditions for extension and decides to grant it, the term for extension shall be the number of days elapsed from the date of patent application to the date when the new drug is approved to be marketed in China, minus five years; the term for extension shall not exceed five years, and the total valid period of patent right after the application for marketing authorization of the drug is approved shall not exceed 14 years. If, upon examination, the request for patent term extension does not meet the conditions for extension, the CNIPA shall give the applicant at least one opportunity to present its/his/her opinions and/or to supplement or correct documents; if the request still fails to meet the conditions for extension, the CNIPA shall make a decision on not granting patent term extension for the drug patent.
In addition, with respect to the transition between patent term extension of a new drug patent and patent term adjustment, if the CNIPA, upon examination, deems that extension of patent term of a new drug shall be granted, and if the patentee has requested patent term adjustment but the CNIPA has not made a decision, the examiner shall wait for the decision on the request for patent term adjustment to be made before determining the time for patent term extension of the new drug; if the patentee has not requested patent term adjustment, and the period of three months from the date of announcement of patent granting has not expired, the examiner shall wait for the expiration of the time limit for requesting patent term adjustment to be made before determining the time for patent term extension of the new drug, unless the patentee has expressly waived the request for patent term adjustment.
The contents above are involved in Rule 80 to Rule 84 of the Implementing Regulations of the Patent Law and Section 3.1 to Section 3.8, Chapter 9, Part V of the Patent Examination Guidelines.
Patent Right Evaluation Report
For utility model patents and design patents which are granted upon formal examination, patent right evaluation report is an important system used to prove their patentability. The Patent Law revised in 2000 first establishes a search report system to appraise the novelty and inventiveness of utility model patents; the Patent Law revised in 2008 "upgrades" the search report to the evaluation report of patent rights, which also includes the design patent, and the scope of appraisal is also expanded to all defects not meeting the conditions for grant of patent rights under the Patent Law; however, in the Patent Law revised in 2020 (i.e. the fourth revision), the accused infringer is added to the applicant of the patent right evaluation report of patent rights in addition to the patentee and the interested party.
Based on the current revised Implementing Regulations of the Patent Law and the Patent Examination Guidelines, accused infringers including defendants in infringement litigation, respondents in administrative enforcement, recipients of lawyer letters and respondents in e-commerce platforms may submit requests for patent right evaluation reports based on relevant supporting documents. After issuing a patent right evaluation report based on such requests, the CNIPA will not only send the report to the accused infringer as the requesting party, but also notify the patentee; if the accused infringer or the patentee believes that there is any error in the patent right evaluation report that needs to be corrected, they may request for correction within two months upon receipt of the patent right evaluation report.
However, when the patentee or interested party submits a request for patent right evaluation report, only the patentee or interested party is qualified to request for correction of the received patent right evaluation report; the accused infringer can only know that the patent right evaluation report is prepared through self-inquiry, and needs to consult or copy the patent right evaluation report at its own discretion. Therefore, taking the initiative to request for patent right evaluation report is relatively beneficial to accused infringers, who can request for correction when the evaluation report conclusion is disadvantageous to them.
In addition, the Draft newly increases the opportunity to submit a request for patent right evaluation report – the patent applicants can make the request at the time of going through patent right registration formalities, and the CNIPA will issue a patent right evaluation report within two months upon receipt of the announcement of grant of patent right. For the request for patent right evaluation report submitted after the announcement of grant of patent right, the time limit for issuing the patent right evaluation report is still within two months from the date of the request.
In recent years' practice, in most of the civil litigations, administrative enforcement cases and e-commerce platform complaints involving utility model or design patent right, the patentee is requested to submit a patent right evaluation report at the time of case filing. Therefore, it is not common that the accused infringer requests a patent right evaluation report based on these cases. However, in the case of receipt of the attorney's letter or warning letter, the accused infringer can either bring a lawsuit to the court to confirm non-infringement, or request the CNIPA to issue a patent right evaluation report. If the patent right evaluation report has a negative opinion on the patentability, the accused infringer can request the CNIPA to declare the patent right evaluation report invalid based on the reasons and evidence stated in the patent right evaluation report. In addition, a negative patent right evaluation report can also reduce the risk of being held as intentional infringement in the infringement litigation (the patentee sends the attorney's letter or warning letter before the litigation).
The content above involves Rule 62 and Rule 63 of the Implementing Regulations of the Patent Law, and Chapter 10, Part V of the Patent Examination Guidelines.
Examination of Obvious Inventiveness of Utility Model Patents and Examination of Obvious Distinctiveness of Design Patents
From 2019 to 2023, about 2 million to 3 million utility model patents were granted each year, and about 630,000 to 790,000 design patents were granted each year. Since the patents have not been examined as to substance before being granted, the quality of these large number of utility model patents and design patents varies from high to low, which brings a greater challenge to the freedom-to-operate investigation and patent infringement risk investigation and is not conducive to the public interest.
In this regard, on the basis of the examination on whether the utility model patent application obviously lacks novelty and the examination on whether the design patent application obviously belongs to the prior design, the present revision of the Implementing Regulations of the Patent Law and the Patent Examination Guidelines have introduced the examination on whether the utility model patent application obviously lacks inventiveness and the examination on whether the design patent application obviously lacks distinctiveness. It is required that examination on the inventiveness of the utility model patent application shall refer to the provisions of Section 4, Chapter 6, Part 4 of the Patent Examination Guidelines (i.e., examination on the inventiveness of the utility model patent in the patent invalidation procedure), and that examination on the distinctiveness of the design patent application shall refer to the provisions of Section 6, Chapter 5, Part 4 of the Patent Examination Guidelines (i.e., examination on whether the design patent has distinctiveness in the patent invalidation procedure).
Therefore, once the CNIPA finds that a utility model patent application may have an issue of obvious lack of inventiveness and a design patent application may have an issue of obvious lack of distinctiveness, it may conduct a formal examination aiming at inventiveness or distinctiveness. Whether to conduct a comprehensive prior art or prior design search and what method to adopt for the search depend on the resources allocated for this work.
It is foreseeable that the promulgation of the abovementioned provisions will further reduce the possibility of abuse of the patent system for utility model and design, and the number of "junk patents" can be further controlled. The public can also be more targeted when carrying out searches for freedom-to-operate and investigation of patent infringement risks. The number of patents at risk retrieved will be reduced, and the cost of searching prior art or prior designs for utility model or design patents at risk may be reduced to a certain extent.
The above contents involve Rule 50 of the Implementing Regulations of the Patent Law, and Section 11 of Chapter 2 of Part 1, Section 8 of Chapter 3 of Part 1, Section 4 of Chapter 6 of Part 4, and Section 6 of Chapter 5 of Part 4 of the Patent Examination Guidelines.
China has ranked first in the world in terms of numbers of patent applications and patent disputes for many years. Innovation entities from all over the world regard China as one of the most important countries to apply for patents and attach more and more importance to patent protection in China. They have a stronger willingness to enforce patent rights, engage in patent licensing and other transactions in China. The revision of the Implementing Regulations of the Patent Law and the Patent Examination Guidelines well complies with the purpose of the fourth revision of the Patent Law, provides a stronger guarantee for the patent protection in China and creates a better business environment for innovators from all over the world.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.