One of the highlights of the current patent law is the introduction of a partial design system, the increase of national priority for designs, and the extension of the protection period of design patent rights. In addition, China has now joined the Hague Agreement. This implementation rule uses a special chapter (Chapter 12) to stipulate the review rules for industrial design applications through the Hague Agreement.
Regarding partial designs, new Rules 30 and 31 respectively stipulate the requirements for pictures or photos submitted for design applications, and the requirements for brief descriptions. Specifically, in case of a partial design patent application, the applicant should still submit an overall view of the entire product, and use a combination of dotted lines and solid lines to indicate the scope to be protected. Otherwise, the applicant should indicate the part for which protection is sought in the brief description.
Regarding national priority of a design patent application, Rule 35 of the new Rules stipulates that a design patent application can claim the priority of an earlier Chinese invention patent application or an earlier Chinese utility model application (domestic priority). When the earlier application is a design application, the earlier application will be deemed to have been withdrawn from the date of filing of the subsequent application. However, if the earlier application is an invention or utility model application, the earlier invention or utility model application will not be deemed to have been withdrawn.
(2) Priority claim restoration, addition and correction
Regarding the time limit for claiming priority, Article 29 of the current Patent Law stipulates a 12-month time limit for claiming priority for an invention patent application, and a 6-month time limit for a design patent application. Under the current Law, if these time limits are missed, there is no way to restore the claim for priority.
In contrast, according to new Rule 36, the applicant can claim priority as long as the later patent application is filed within 14 months from the priority date. However, it should be noted that “justifiable reasons” and payment of a priority restoration fee are required if the claim is filed between the 12th and 14th month.
On the other hand, under the current Patent Law, the applicant is required to state all priority claims while submitting the patent application, and is not allowed to make any additions or corrections later on. However, new Rule 37 makes it possible. According to Rule 37, if an invention or utility model patent applicant has requested priority when submitting a patent application, even if one or more of the priorities are omitted or incorrectly filled, the applicant can still reclaim the right of priority within 16 months from the priority date, or request to add or correct the priority within 4 months from the filing date. However, this rule does not apply to a design patent application.
(3) Clarifying the filing date and service date in case of an E-filing
New Rules recognizes the e-filing as one of the written filing forms, and clearly stipulate in Rule 4 that the date of submission of various documents submitted in electronic form is the date of entry into the specific electronic system designated by the CNIPA. Vice Versa, the date of service of various documents served in electronic form is the date of entry into the electronic system recognized by the parties.
In practical operations prior to the new Rules, CNIPA uniformly used the rule of “issuance date + 15 days” to determine the delivery date, regardless of service by post, or personal delivery or by electronic means. After the new implementation rules come into effect, for the service by electronic means, the service date shall always be the exact date when the documents make their way into the electronic system recognized by the parties, i.e., the e-mail inbox. There will be no more the additional 15 days.
(4) Relaxed conditions for public disclosure without loss of novelty
New Rule 33 relaxes the conditions for public disclosure without losing novelty by enlarging the scope of allowable academic conference or technical conference to cover “academic conferences or technical conferences convened by international organizations recognized by the relevant competent authorities of the State Council”. In contrast, the current Patent Law only recognizes the academic conferences or technical conferences convened by the State Council or National Academic Organization.
(5) Introduction of request for delayed examination
New Rule 56.2 stipulates that the applicant may submit a request for delayed examination of a patent application. This delayed examination applies to all three types of patent applications, but the time tables for submitting the request vary. According to the new Guidelines for Patent Examination, for an invention patent application, the applicant is allowed to file the request for delayed examination at the same time of requesting substantive examination. The applicant can request a one-, two- or three-year delay of the examination.
Part II. Improvements to Patent Examination and Review
- Introduction of “Principle of Good Faith”
Introduction of this “Principle of Good Faith” is one of the highlighted amendments to the Patent Law in 2021. To comply with the amendments to the Patent Law, the new Rules refine this principle by clearly stipulating that any patent application shall be based on true creation, and that no false statements shall be allowed regarding an open license, etc. The patent examiner can apply this principle in the whole patent prosecution process, ranging from the patent filing to the post-grant proceeding.
- Preliminary examination on nonobviousness of utility model and design patent applications
New Rule 50 determines the scope of preliminary examination of utility model and design patent applications to additionally cover whether a utility model patent application is obviously in the lack of inventiveness, or whether a design patent application is obviously not substantially dissimilar with a prior design or the combination of prior design features.
- Modified “Confidentiality Examination” System
It is worth noting that the new Rules deletes the old Rule that “if the applicant fails to receive the confidentiality review notice within 4 months from the date of submission of the request or fails to receive the notification within 6 months from the date of submission of the request, the applicant is allowed to go ahead to file the international patent application.”
The new Rules have more rigid provisions on the time limit for the CNIPA to issue a “notice of confidentiality review” and “decision on whether confidentiality is required.” On the other hand, if the applicant does not receive a confidentiality review notice within 4 months, or does not receive a decision requiring confidentiality within 6 months, it no longer means that the applicant has obtained an “implied permission.” The applicant shall instead contact the CNIPA to confirm the result before filing the international patent application.
- Modified Patent Reexamination Procedure
According to the old Rule 62, after a patent examination request is accepted, the patent must go through a preceding examination process by the original examination division. If the original examination division insists on the rejection, the appeal board will conduct a collegial review; if the original examination division withdraws the rejection, no further collegial review is required.
New Rule 62 deletes the aforesaid procedural requirements for appealing a final rejection to the appeal board, which, however, does not mean that a preceding process is no longer essential, but that the preceding process need not be carried out by the original examination division any more.
In addition, new Rule 67 further regulates to what extend the appeal board can determine the review at its discretion. Specifically, the Board can modify the closest prior art used in the previous rejection decision, and can change the combination of the prior arts. This change is expected to relax the procedural requirements which the appeal board should meet while making the final decision, and avoid a prolonged procedure. Rule 67 also sets forth requirements for the appeal board to hold hearing before making any new decisions adverse to the applicant.
- Reissue of claims in the post-grant proceeding
According to the newly added Rule 73, if the patentee makes modifications to the claims during the invalidation process, which the appeal board accepts and thus maintain the patent at least partially valid, the appeal board shall announce the amended set of claims to the public, so that the public can have better acknowledge of the scope of the patent.
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On December 21, 2023, CNIPA released new “Implementing Rules for the Patent Law of the People’s Republic of China” (referred to as the “New Rules”), and released the “Patent Examination Guidelines” on the same day. So far, the new supporting rules and regulations for the Patent Law amended in 2020 have finally been released.
The New Rules includes 13 chapters and 149 rules in total. These amendments are mainly concerned with improvements to patent filing, patent examination, connection between national laws and international rules, and patent enforcement and judicial protection. We hereunder explain some of the significant and highlighted amendments by roughly classifying them into these categories.