New Amendment of the China Patent Law
On 17 October 2020, the Standing Committee of the National People’s Congress of the PRC passed the decision to amend the Patent Law of the PRC. The amended patent law will come into effect on 1 June 2021.
Some of the important changes of the China Patent Law are highlighted below:
- A design patent will no longer limit to protect the entire design of a product. Protection of a portion of the product design will be possible.
- Protection term of a design patent will be extended from 10 years to 15 years.
New Article 20 is added to prohibit anti-competitive practices in relation to patent rights. Abuse of patent right, and actions constitute of monopolization would be handled in accordance with the PRC Anti-Monopoly Law. This is a good move because there has always been a lack of clarify as to what would amount to abuse of IP rights under Article 55 of the PRC Anti-Monopoly Law.
Patent Term Extension
(i) In case an invention patent is only granted after 4 years or more from its filing date or 3 years or more after a request for substantive examination was filed, the patentee can request for an extension of patent term for any unreasonable delay.
(ii) Patent term extension will also be available for pharmaceutical-related patents, similar to a supplementary protection certificate in other jurisdictions, to compensate the time spent in obtaining marketing authorization for a drug. The maximum extension for drug- related patents shall be 5 years with a total effective patent term not exceeding 14 years after the authorization is obtained.
Public Open License System
(i) A brand new public open license system is introduced in the amended law. At the request of a patentee who wishes to license the patent to the public, CNIPA will publish such open license information, including the relevant fee and payment means as requested by the patentee.
(ii) Annuity fee is reduced for any patents under the open license system.
(i) Damages for willful infringement has been increased to no more than 5 times of the profits made from the patent infringement in line with the PRC Trademark Law and PRC Anti-Monopoly Law.
(ii) Statutory damages of patent infringement has also been raised from RMB30,000 to RMB5,000,000.
(iii) Legal proceedings in relation to patent infringement may be filed up to 3 years from the date of such infringement act and infringer are known or ought to know by the patentee. This is in line with the new statutory time limit under the PRC Civil Procedure Law.
The amended law has made significant changes in enhancing patent protection generally, curing some pain points under the old law and aligning with other jurisdictions’ patent practices. The concept of Public Open License System is an innovative one which encourages patent licensing to the wider public. It is envisaged that the amended law will be widely welcomed.
If you would like to know more about this topic, please contact our Managing Partner, Mr Alan Chiu (email: [email protected]) or our Patent Executive (Qualified Patent Attorney), Ms Salina Ip (email: [email protected])