February 8, 2023

Volume XIII, Number 39

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February 07, 2023

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February 06, 2023

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China’s National Intellectual Property Administration Releases New Draft of the Patent Examination Guidelines

On October 31, 2022, China’s National Intellectual Property Administration (CNIPA) released another draft of the Patent Examination Guidelines, which is somewhat analogous to the US Patent & Trademark Office’s (USPTO) Manual of Patent Examining Procedure (MPEP).  Some highlights include explaining how patent term adjustment and patent term extension will work; providing for partial designs; late priority claims; and deletes the 15-day mail delay for electronically-delivered documents.  Comments are due December 15, 2022, which may enable CNIPA to meet its target of releasing the final version by the end of December.

A non-exhaustive list of changes follows:

Late Priority Claims and Late Filings

The draft Guidelines provide for a 4-month from filing(or 16 month from priority claim) grace period to/correct priority. However, the priority claim is not eligible if the parent granted.  There will also be a 14-month (from priority)/2 -month (from filing date) grace period to claim priority in an application filed after the 12-month deadline to claim priority.

6.7.5 Applications not filed in good faith will be withdrawn (as if never filed)

Partial Designs

The draft Guidelines allow for partial designs by deleting a section not allowing for partial designs. The Guidelines also delete “The claimed design is not in the conventional form of the product itself, such as a design in which a handkerchief is tied into an animal form.”

The following limitations though are imposed on partial designs:

(10) A relatively independent area or a partial design that constitutes a relatively complete design unit cannot be formed on the product. For example, a turning line in the handle of a drinking glass, an irregular part of a spectacle lens taken arbitrarily.

(11) The partial design claimed for patent protection is only the design on the surface of the product or the combination of the design and the color. For example, the pattern on the surface of a motorcycle.

Restoration of Priority Claims

For PCT national phase entry, if the Receiving Office restores a priority claim in international phase, Applicants do not need to repeat the restoration process during national phase entry

Service of Process in relation to an international design application 

In the review procedures for reexamination and invalidation requests, for international design applications, if it involves serving documents to parties who have no domicile in mainland China, delivery methods such as mail, fax, e-mail, and announcement may be used. If it is served by announcement, it shall be deemed to have been served after one month has elapsed since the date of announcement.

15-day mail-delay period

Deletes 15-day mail-delay period for response for electronically delivered documents.

Patent Term Adjustment (PTA)

A patent is eligible for PTA if it grants 4 years from filing and 3 years from requesting examination minus delays caused by applicant. No PTA is available if simultaneously filed a utility model.

The applicant will need to file request within 3 months of grant and pay a fee. CNIPA will not automatically calculate and award PTA like the USPTO does.

Delays caused by the following circumstances are not unreasonable delays in the granting process: suspension procedures, preservation measures, administrative litigation procedures, and reexamination procedures for the grant of a patent right after amending the patent application documents in accordance with Article 66 of the Implementing Regulations of the Patent Law.

The following are unreasonable delays caused by the applicant:

(1) Delay caused by failure to reply to the notice issued by the Patent Office within the specified time limit, the delay time shall be from the date of expiry of the time limit to the date of the actual submission of the reply.

(2) In the case of an application for delay of examination, the delay time shall be the actual delay time of examination.

(3) For the delay caused by the incorporation by reference, the delay time is the delay time caused by Article 45 of the Implementing Regulations of the Patent Law.

(4) The delay caused by the request for restoration of rights shall be from the date of expiry of the original time limit to the date of issuance of the approval notice of the request for restoration of rights to be restored. Unless it can be demonstrated that the delay was caused by the patent office.

(5) For an international application that has gone through the formalities for entering the Chinese national phase within 30 months from the priority date, and the applicant does not request the delay caused by the advance processing, the delay time is from the date of entering the Chinese national phase to the expiration of 30 days from the priority date. date of the month.

Patent Term Extension (PTE)

To request compensation for the term of a drug patent right, the following conditions shall be met:

(1) The date of announcement of patent authorization for which compensation is requested shall be earlier than the date of approval of the application for drug marketing authorization;

(2) When the compensation request is made, the patent right is in a valid state;

(3) The patent has not been compensated for the term of the drug patent right;

(4) The technical solution related to the new drug that has obtained the marketing authorization shall fall within the protection scope of the patent claim for which compensation is requested;

(5) If a drug has multiple patents at the same time, the patentee can only request compensation for the term of the drug patent right for one of the patents;

(6) If a patent involves multiple drugs at the same time, a compensation request for the term of the drug patent right can only be filed for one drug with respect to the patent.

Applicants must request within 3 months of receiving drug marketing authorization.

If compensation is granted for the term of the patent right of a drug, the compensation term shall be 5 years less than the number of days between the date of the patent application and the date when the new drug is approved for marketing in China. The compensation period shall not exceed 5 years, and the total effective patent right period after the approval of the drug marketing authorization application shall not exceed 14 years.

Open Licensing

Licensors can’t require more than a fixed fee payment of 20 million RMB. If license basis is profit can’t be higher than 40%, or if based on sales, not higher than 20%.

Licensors are entitled to reduction in annuities once the open license is approved. Amount of the reduction is not specified.

The full text is available here (Chinese only).

© 2023 Schwegman, Lundberg & Woessner, P.A. All Rights Reserved.National Law Review, Volume XII, Number 305
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About this Author

Aaron Wininger IP Attorney China Portfolio Development
Director of China Intellectual Property Law Practice Schwegman Lundberg & Woessner

Aaron Wininger is a Principal and Schwegman’s Director of China Intellectual Property. Aaron counsels both U.S. and Chinese companies on portfolio development and preparation of their patent applications and office action responses. He has worked with clients in the areas of software, networks (wired and wireless), lasers, medical devices, semiconductors and physics.

Aaron prosecutes both Chinese and U.S. trademarks. He has also drafted and prosecuted hundreds of U.S. and international patent applications in a broad spectrum of areas, including computer hardware and software, the...

408-278-4059
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