On December 27, 2008, the Standing Committee of People’s National Congress approved amendments of the Chinese Patent Law. This third amendment aims at enhancing the innovation ability and enforcing protection of patent rights. Here’s a summary of the amendments most relevant to foreign clients:

Direct Foreign Filing Available (A20)

Now inventions/creations completed in China can be filed for patent protection in a foreign country without a Chinese filing first. Also, all inventions/creations for foreign filing are now subject to a security clearance before SIPO. The clearance procedure will be written into the Implementing Rules.

Patentability: Absolute Novelty Requirement (A22, A23)

The “prior art” is now explicitly defined as the state of the art known worldwide to the public prior to the application/priority date. This raises the bar of the novelty requirements.

In addition, the so-called “conflicting patent application” now includes a patent application for the same technology, filed before SIPO prior to the application/priority date and published thereafter by any person/entity, as opposed to any person/entity other than the applicant of a patent application in question, thereby rounding up all scenarios for the same creation/invention legally.

Inventions/Creations Relying on Genetic Resources (A5, A26.5)
Any inventions/creations mainly relying on genetic resources, for which said genetic resources are illegally obtained, are not to be patented. For this purpose, source of the involved genetic resource must be provided and stated in the specification.

Compulsory License for Patented Drugs (A48 ~ A58)
Provisions that were in the Implementing Rules are now included in the Patent Law. In addition, SIPO may grant a compulsory license, “where the public health interest so requires”, for manufacturing and exporting drugs patented in China to designated countries or regions, which include least-developed countries, or WTO member countries or regions with no or insufficient capacity to manufacture the patented drug.

Protection of Patent Rights (A62 ~ A69)
– Prior art defense is allowed in infringement lawsuits (new A62)
– Administrative measures for patent counterfeiting acts are outlined (new A64)
Specifically, patent authorities’ rights in collecting evidence and imposing administrative fines
– Calculation of compensation for infringing acts is included in law (new A65)
In particular, the right owner’s expenses in stopping infringing acts are included in the compensation.
– Injunctive measures and seizure of evidence are written into law (new A66 and A67)
Parallel imports are now legal (new A69)
Bolar Exemption is legalized (new A69)

Provisions Related to Design Patents
– Added right of “offer for sale” to design patent owners (A11)
– Absolute novelty requirement (A23)
– Designs mainly for identifying planar printing materials are no longer patentable (A24)
– Similar designs of a product may be filed in one application (A31). This article can greatly benefit designers in fees and application procedures.

Double Patenting (A9)
The amendment has written the provision for preventing double patenting into the Law. But in the meantime, the practice of filing patent applications of invention and of utility model on the same date is reinforced, which encourages the use of the utility model patent as an effective tool for quick granting of rights.

The amended Patent Law is set to come into effect on October 1, 2009.

Today’s Guest Barista post is by Ming & Sure Intellectual Property Office, a leading intellectual property law firm in China with over seventy dedicated members providing a full range of intellectual property legal services, from procuring and securing rights with the broadest scope possible to enforcing rights through litigation and administrative measures, and other matters such as appeals, licensing, due diligence and portfolio management.

For more updates on intellectual property matters in China, please visit their web site.  Contact:  7 Shangdi Fifth Street, Haohai Building, 5th Floor, Haidian District, Beijing 100085, P.R. China.  TEL: +86-10-8289-6186; FAX: +86-10-8289-6187; Email: mail@mingsure.com

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