China on the way to a high-technology
country: The legal policy perspective
Stefan Luginbuehl
Lawyer, International Legal Affairs
Background of the revision of the patent
law
• National IP Strategy initiated in 2005
"China will become a country with a
comparatively high level in terms of creation,
utilisation, protection and administration of
IPRs by 2020"
– National patent development strategy of November
2010
A group of core patents for newly and
emerging industries and key technology
should be in the hands of China within the
next 10 years
Evolution of patent applications filed with
SIPO
314573
domestic
foreign
total
300000
275000
289838
245161
250000
229096
225000
210490
194579
200000
173327
175000
153060
150000
130133
122318
125000
105318
93485
100000
80232
50000
25000
65786
63204
75000
56769
51747
36694
39806
30038
25346
40426
15596
33166
26401
21098
79842
88172
92101
95259
85477
64347
48549
0
1999
2000
2001
2002
2003
2004
2005
2006
2007
2008
2009
Evolution of patents granted by SIPO
128489
domestic
123500
foreign
114000
total
104500
93706
95000
85500
76000
67948
65391
66500
53305
57000
57786
63098
49360
47116
47500
37154
38000
32600
31119
21473
28500
32709
36003
46590
25750
16296
12683
19000
9500
3097
18241
10901
4540 6177
6506
0
1999
31945
15605
7637
2000
20705
25077
11404
5395
2001
5868
2002
2003
2004
2005
2006
2007
2008
2009
Filing strategy of Chinese companies with the EPO
2007
2008
2009
2010*
"Euro-direct"
396
383
403
402
"Euro-PCT"
749
1127
1309
1452
Total
1145
1510
1608
1854
January to November 2010
Objectives of third revision of the
Chinese Patent Law
• Improved patent quality
• Protection of national defence interests and other state
interests
• Improved enforcement of patent rights
• Better balance between patent protection and public
interests
Amendments in order to improve patent
quality
• Introduction of absolute novelty standard
• Scope of "conflicting applications" expanded
• Simultaneous application for utility model and patent with
obligation to declare to abandon utility model right before
patent is granted
Absolute novelty standard
Art. 22(5) Chinese Patent Law
...
(5) The "prior art" referred to in this law refers to any
technology known to the public before the filing date of the
patent application in China or abroad.
"Conflicting applications"
Art. 22(2) Chinese Patent Law
...
(2) "Novelty" means that the invention or utility model shall
neither belong to the prior art, nor has any entity or
individual previously filed before the date of filing with the
patent administrative department under the State Council
an application on an identical invention or utility model
which was recorded in patent application documents or
other gazetted patent documents published after the said
date of filing.
Simultaneous application for a utility model
and a patent
Art. 9(1) Chinese Patent Law
(1) For any identical invention-creation, only one patent
right shall be granted. However, with respect to the
application of a utility model and a patent for the identical
invention-creation filed by the same applicant on the same
day, the invention patent may be granted if this utility model
obtained first is still in force, and the applicant declares to
abandon the utility model that has been granted.
Simultaneous application for utility model
and patent
Rule 41 Implementing Regulations to the Chinese Patent Law
(ImplReg)
...
(2) Where an applicant files an application for a utility model and a
patent for the same invention-creation on the same (the filing date), the
applicant shall make a declaration each time that he or it has applied for
the other patent for the same invention creation...
...
(5) The utility model is abandoned upon the date of announcing the
grant of the patent.
Amendments in order to protect national defence
interests and other interests of the state
Art. 20 Chinese Patent Law
(1) Any entity or individual intending to file a patent application in a
foreign country for an invention-creation made in China, shall apply in
advance for a confidentiality examination conducted by the patent
administrative department under the State Council....
...
(5) Any foreign patent application that violates the provision of the first
paragraph of this Article will not be granted a patent right if the patent is
applied for in China.
Amendments in order to protect national defence
interests and other interests of the state
Rule 8 ImplReg
(1) Invention or utility model made in China as stipulated in Article 20 of
the Patent Law refers to those invention-creations or utility models, for
which the substantial content of the technical solution is completed
within the territory of China.
Amendments in order to protect national defence
interests and other interests of the state
• Request for confidentiality examination has to be filed prior to the
filing of an application abroad, regardless of whether an
application is also filed with the Chinese State Intellectual
Property Office (SIPO)
•
The request must include a detailed description of the
technical solution if an entity or individual intends to file
abroad
•
No separate request for confidentiality examination is necessary if
an applicant files an international application with SIPO
Amendments in order to protect national defence
interests and other interests of the state
Procedure (Rule 9 ImplReg)
•
SIPO examines whether the invention/utility model is likely to
involve interests related to national security or other substantial
interests requiring confidentiality
•
If the applicant does not receive a notification from SIPO within 4
months from the date of submitting the request that such
interests are likely to be involved, he can apply for a patent abroad
Amendments in order to protect national defence
interests and other interests of the state
Procedure (Rule 9 ImplReg)
•
If the applicant has received a notification from SIPO that such
interests are likely to be involved, SIPO has to decide on whether
the confidentiality must be maintained and notifies the applicant
•
If the applicant does not receive any decision within 6 months from
the date of submitting the request on whether the confidentiality
must be maintained, the applicant can apply for the patent abroad
Amendments with regard to a better enforcement
of patent rights
Administrative authorities
– Fines 4 x the illegal earnings in case of passing-off/patent
counterfeiting, or up 200‘000 RMB (≈ 22’000 €) if there were no
illegal earnings (Art. 63 revised Chinese Patent Law)
– More competences as regards investigation of premises (Art. 64
revised Chinese Patent Law)
Amendments with regard to a better enforcement
of patent rights
Civil courts
-
Damages to be calculated in a mandatory hierarchy of methods
(Art. 65 Chinese Patent Law)
1. Actual losses
2. Profits of the infringer
3. Multiple licencing fees
4. Statutory damages no less than 10‘000 yuan (≈ 1’100 €) and no
more than 1‘000‘000 yuan (≈ 110’000 €)
-
The amount of damages must include the reasonable costs
incurred for stopping the patent infringement
Amendments with regard to an improved balance
between patent protection and public interests
Extended possibilities to grant compulsory licences
•
In case the enforcement of the right is considered to be a monopolistic
act (Art. 48(2) Chinese Patent Law)
•
2003 Doha declaration on TRIPs and public health
Amendments with regard to an improved balance
between patent protection and public interests
Requirement to declare the source of genetic resources in the application
Art. 26 Chinese Patent Law
...
(5) An applicant who files a patent application for an invention-creation
completed on the basis of genetic resources shall in the patent
application document indicate the direct and original source of the genetic
resource of the genetic resources; the applicant unable to indicate the
original source of the genetic resource must provide an explanation.
Amendments with regard to an improved balance
between patent protection and public interests
Requirement to declare the source of genetic resources in the application
•
Must be indicated in the application
•
Special forms must be filed indicating the direct and original source
•
SIPO will issue a notification to correct any defects
Amendments with regard to an improved balance
between patent protection and public interests
New exceptions from patent infringement
•
"Prior art defence" (Art. 62 Chinese Patent Law)
•
"Bolar exemption" (Art. 69(4) and (5) Chinese Patent Law)
•
"International exhaustion" (Art. 69(1) Chinese Patent Law))
Conclusion
•
The third revision of the Chinese patent law evidences a shift to the
establishment of a domestic patent system which serves China's own
economic interests
•
China continues its path to protect its own knowledge, and using
foreign knowledge to increase the competitiveness of its own
companies on the domestic and world-wide markets
Thank you for your attention
Stefan Luginbuehl, Ph.D.
Lawyer, International Legal Affairs
European Patent Office, Munich
Tel: +49-89-2399 5290
Fax: +49-89-2399 5219
E-mail: sluginbuehl@epo.org
www.epo.org