On December 21, 2023, the Chinese Intellectual Property Administration (CNIPO) issued a series of regulations on its official website, which provided information and guidance on the amendments to China’s patent laws and regulations in 2023.
1. Introducing online service for patent filings
The “Implementing Regulations” now explicitly state that electronic forms are considered equivalent to written forms, and they provide improved regulations for the submission and delivery of various documents in electronic formats.
The revised Article 4 specify that when various documents are submitted to the State Council’s patent administrative department in electronic format, the date of submission is determined based on the date of entry into a specific electronic system designated by the State Council’s patent administrative department.
2. Clarifying the priority rights system
It specifies conditions and procedures for requesting the restoration of priority rights within a certain time frame, as well as for adding or correcting priority claims based on previously filed applications.
A new Article 36 provides applicants with a grace period for priority rights. It explicitly states that even if the deadline specified in Article 29 of the Patent Law is exceeded, applicants have the opportunity to request the restoration of priority rights within two months from the expiration date if they have legitimate reasons.
Another new provision, Article 37, specifies that within 16 months from the priority date or within 4 months from the application date, applicants can request to add or modify priority claims in their request documents.
A new Article 45 states that if an applicant has already requested priority rights on the submission date, they can, within 2 months from the submission date or within the timeframe designated by the State Council’s patent administrative department, correct or submit missing documents by referring to the previously filed application documents.
According to Article 45, if the supplementary documents meet the relevant requirements, the submission date will be determined as the date of the initial submission of documents. This means that even after the supplementary documents are submitted, the applicant’s application date remains unchanged, preserving their priority rights and patent protection period.
3 Introducing patent term compensation to compensate for protection term losses caused by unreasonable delays.
Introduction of Patent Term Compensation: A new chapter, “专利权期限补偿” (Patent Term Compensation). This means that in certain specific circumstances, the protection period of a patent may be extended.
Compensation periods are calculated based on the actual number of days of unreasonable delay during the examination process of an invention patent. Unreasonable delay refers to the number of days between four years from the invention patent application date and three years from the date of the substantive examination request until the date of patent grant, minus the days of reasonable delay and the days of unreasonable delay caused by the applicant.
Reasonable Delay: Reasonable delay includes delays caused by re-examination procedures, specific legal provisions, and other reasonable circumstances.
Exemptions from Compensation: Compensation provisions do not apply in cases where the same applicant files both a utility model patent and an invention patent for the same creation on the same day, and the invention patent is granted according to relevant regulations.
Timing and Conditions for Requesting Compensation: Patent holders must submit their compensation requests to the State Council’s patent administrative department within three months from the date of patent grant.
Compensation for Invention Patents Related to New Drugs: There are specific provisions for compensation related to invention patents concerning new drugs. The compensation period is calculated from the patent application date to the date when the new drug is granted marketing approval in China, minus five years.
4. Improving the ‘partial exterior design’ provisions
Article 30 outlines the application format requirements for partial exterior design patents. It emphasizes that when applying for a patent related to a partial exterior design, the applicant should provide views of the entire product and use a combination of solid and broken lines or other methods to indicate the specific part that needs protection.
Article 31 provides guidance on writing the brief description for partial exterior design patent applications. It specifies that in such applications, the brief description should clearly state the part requested for protection, except for the part already indicated using a combination of solid and broken lines in the views of the entire product.
5. Elaborating on the domestic priority provisions for exterior designs to enhance the level of protection.
The 2020 amendment to the “Patent Law” introduced provisions related to domestic priority rights for exterior designs. In the current amendment of the “Implementing Regulations,” Article 35 provides detailed regulations regarding domestic priority rights for exterior designs.
Types of Priority Applications: Priority can be claimed based on an earlier application for exterior design, an invention, or a utility model.
Consequences of Claiming Priority Based on an Earlier Exterior Design Application: If the earlier application used as the basis for claiming priority is also an exterior design application, it is considered withdrawn from the date of filing the subsequent application. In other words, the earlier exterior design application is abandoned.
No Withdrawal for Priority Claims Based on Invention or Utility Model Applications: If the earlier application is for an invention or a utility model and not an exterior design, it will not be considered withdrawn due to the filing of a subsequent exterior design application. This means that the earlier invention or utility model application can coexist with the subsequent exterior design application.
6. Introducing ‘Special Regulations for International Applications of Exterior Designs’
The regulations clarify that an international design application is deemed to be a domestic design patent application filed with the State Council’s patent administrative department.
Submission of Views of the Entire Product for Partial Exterior Design: Even when applying for a partial exterior design patent, the regulations still require the submission of views of the entire product. This ensures consistency in application requirements.
International Registration Date: The international registration date, as determined under the Hague Agreement, is considered the application date for domestic purposes when designating China.
Examination by the Patent Administrative Department: After the international bureau publishes the international design application, the State Council’s patent administrative department examines it. If no grounds for rejection are found, the department issues an authorization decision.
Notification to the International Bureau: Regardless of whether the application is granted or not, the State Council’s patent administrative department notifies the international bureau of the examination decision.
