New Rules for Patent Examination and Protection in China (III)

View: 126     Date: 2023-12-29 03:31

Analysis on the optimization of patent examination system through the Revisions to Implementation Regulations of Patent Law

Authors: Na ZHANG, Huaiyuan XU

With regard to optimizing the patent examination system and improving the quality of patent examination, this revision to Implementation Regulations of Patent Law involves the following points:

1. Regulating the patent application behavior (R11, R50, R59, R69, R100)

In recent years, the number of patent applications in China has been increasing. In order to regulate irregular behaviors in the process of patent applications and improve the quality of patents, a clear and direct legal basis has been provided at the legal level and the principle of good faith has been introduced.

This revision to Implementation Regulations of Patent Law introduced the provisions that all types of patent applications should follow the principle of good faith, and in the preliminary examination, substantive examination and each stage of the invalidation procedure should review whether the patent application follows the principle of good faith, that is, the principle of good faith is included in the patent rejection and patent invalidation provisions. The specific revisions include R11, R50, R59 and R69.

In addition, in order to strengthen the regulation for violating the principle of good faith, the Implementation Regulations of Patent Law also added corresponding punishment clauses. Those who violate the principle of good faith, or have dishonest behavior related to open licensing, will be warned or fined no more than RMB100,000. Specific revisions include R100.

The administrative punishment for the behavior of fraudulently apply for patents in the Implementation Regulations of Patent Law gives the local patent administrative departments the administrative authority and means to manage the behavior of abnormally apply for patents. In the past few years, the behavior of abnormally apply for patents has seriously affected the improvement of patent quality and innovation ability, which caused foreign countries to worry and doubt for the quality of Chinese patents. China National Intellectual Property Administration has formulated and revised the regulations and normative documents such as "Measures on regulating patent application behavior", the purpose of which is to crack down on the behavior of abnormally apply for patents and improve the quality level of patent creation. In recent years, CNIPA has investigated and notified hundreds of thousands of abnormal patent applications, requiring applicants to withdraw or submit appeals documents. However, the patent administration lacks the means and tools for administrative enforcement and can only persuade relevant party to withdraw their inappropriate patent applications through policy guidance. After the implementation of the newly revised Implementation Regulations of Patent Law, the patent administrative departments can make administrative penalties such as warnings or even fines, which is conducive to maintaining the high-pressure situation of cracking down on the behavior of abnormally apply for patents and promoting the formation of a good intellectual property culture of honesty and advocating innovation.

2.      Introducing deferred examination system  (R56)

In order to meet the various needs of innovative entities in the examination process and the differentiation from various fields, the relevant provisions for deferred examination was introduced in Guidelines for Patent Examination in 2019. Deferred examination system is a direct response to the core concern of applicants to rational patents layout and improvement of patent quality, as well as an echo to the relevant provisions of the Patent Law Treaty administered by the World Intellectual Property Organization. In the current revision to Implementation Regulations of Patent Law, deferred examination for three types of patent applications can be requested, and the deferred examination request can be withdrawn at any time. The specific revisions include R56.

In conjunction with the above legal provisions, the following practical guidance could be considered when applying deferred examination system:

Ø  For invention applications, the deferred examination request can be filed together with the request for substantive examination, and the period for deferred examination is 1 year, 2 years or 3 years from the effective date of the request for deferred examination;

Ø  For utility model applications, the request shall be filed at the same time when filing utility model application, and the period for deferred examination is 1 year from the effective date of the request;

Ø  For design applications, the request shall be filed at the same time when filing deign application. The period for deferred examination is counted in months, and the longest period for deferred examination shall be 36 months from the effective date of the request.

Ø  The deferred examination request can be withdrawn at any time.

3.      Optimizing the re-examination system  (R67, R73)

In re-examination and invalidation procedures, whether the panel of CNIPA can carry out examination according to the authority is one of the most controversial topics in the theoretical and practical circles. In practical, the cases of the decisions for re-examination and invalidation revoked by the relevant people's court are repeatedly appeared because CNIPA conducted examination according to the authority on the request for re-examination and invalidation, which violated the principle. In the current revision to Implementation Regulations of Patent Law, CNIPA proposed to conduct examination according to the authority in re-examination and invalidation procedures for the defects not pointed out in the rejection decision and the reasons not provided by the invalidation applicants. In the draft (for review) from the Ministry of Justice to seek public opinion for the revision to Implementation Regulations of Patent Law, R67, "In re-examination procedure, when necessary, the patent administrative department under The State Council may, in accordance with provisions, review the defects not pointed out in the rejection decision", and R74, "In the invalidation procedure, when necessary, the patent administrative department under The State Council may, in accordance with the provisions, review the reasons not provided by the applicants, but shall give the party opportunity to state opinions" are introduced.

In the final published Implementation Regulations of Patent Law, the above provisions in the draft (for review) are deleted, and only stipulated the examination according to the authority in re-examination procedure. In the invalidation procedure, the legislators still stand in the position of the parties and do not allow the panel of CNIPA to conduct examination for the facts, reasons and evidences which not provided by the applicants. The specific revisions include R67.

In addition, in the invalidation procedure, the patentee may make voluntary amendment for the claims and the patent may be partially invalidated by the panel. However, the public are difficult to know the content of the final claim, and it is unable to make information open to public. Therefore, in this revision to Implementation Regulations of Patent Law, stipulated that if a decision is made to maintain the validity of the patent right or declare part of the patent right invalid on the basis of the amended claims, the amended claims shall be published. The specific revisions include R73.

In conjunction with the above legal provisions, the following practical guidance could be considered when applying examination according to the authority system:

Ø  For patent re-examination procedure, before making a request for re-examination, the application document should be comprehensively examined to see if there are any defects not pointed out by the examiner in the substantive examination procedure.

Ø  If the application document has defects not pointed out by the examiners in the substantive examination procedure, and the defects are difficult to overcome, it may face the examination according to the authority by the panel after entering the re-examination procedure, even if the defects pointed out in the rejection decision are overcome, there is still the possibility for not being granted.