Several Changes of China Patent Law Effective on June 1, 2021

Jeekai & Partners - 2021-07-01

 Several Changes of China Patent Law Effective on June 1, 2021

(Prepared by Jeekai & Partners)

Applicant Friendly - Design Patent:

Partial design is patentable.  For applying for a partial design patent, it is required to submit views of the overall product, and use a combination of dashed and solid lines or other means to indicate the content that needs to be protected.  When necessary, specify the part to be protected in the brief description. 

Patent term for design patents filed on or after June 1, 2021 is extended to 15 years from filing date.

Adjustment of Deadline for Submission of Priority Document:

For invention and utility model applications, if priority is claimed, the certified copy of the priority application should be submitted within 16 months from the earliest priority date. 

Patent Term Compensation for Unreasonable Delay in Prosecution (Applied to Invention Patents Granted on or after June 1, 2021 only):

If an invention patent was granted after expiration of FOUR years from the filing date AND THREE years from requesting substantive examination, and the delay was not caused by the applicant, for example, failure to respond to office action within designated term, request deferred examination, etc, the patentee may request patent term compensation within THREE MONTHS counted from the date the patent is granted.   

Patent Term Compensation for New Drug Related Invention Patents (Applied to Invention Patents Granted on or after June 1, 2021 only):

Invention patents relating to active ingredients of new drugs approved for marketing for the first time by the CFDA is qualified for patent term compensation in China.  The compensation term is no more than 5 years, and the total patent term is no more than 14 years.  To obtain the patent term compensation, the patentee should file a request with the CNIPA within THREE MONTHS counted from the request for marketing of the new drug was approved by the CFDA.  

Open License (Applied to all patents effective on or after June 1, 2021):

Starting on June 1, 2021, the patentee may declare in writing to the CNIPA that it or he is willing to license any entity or individual to exploit the patent and defines the payment method and the standard of the license fee.  Any entity or individual may notify the patentee in writing and pay the license fee in accordance with the announced payment method and the standard, and then obtain the license.  Open license can only be a common license, not an exclusive or sole license.  Open license can be withdrawn, which shall be requested in writing with the CNIPA. But, the withdrawal does not affect the validity of the open licensing granted earlier.

Patent Protection:

The time limit for filing patent infringement litigations is within 3 years from knowing or should have known the infringing acts and infringer. 

Punitive damage compensation for intentional infringement with serious circumstances is 1-5 times of compensation. 

Statutory compensation is 30,000~5 Million RMB.