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	AN ACCOUNT OF THE STATE INTELLECTUAL PROPERTY OFFICE ON THE NEWLY REVISED DETAILED RULES FOR THE IMPLEMENTATION OF THE PATENT LAW

	(On August 25, 2000, the Decision on Amending the Patent Law of the People's Republic of China was adopted at the 17th session of the Standing Committee of the Ninth National People's Congress. In order to facilitate the implementation of the revised Patent Law, the State Intellectual Property Office (hereinafter "SIPO"), which, on the basis of summarizing its many years of practical experiences, and upon careful study and soliciting the opinions of patent agencies, patent administrative organs, the relevant departments of the State Council, and the relevant experts and scholars, drafted out the Amendments to the Detailed Rules for the Implementation of the Patent Law of the People's Republic of China (Draft for Deliberation). The legal affairs office of the State Council has convened symposiums for several times to solicit opinions, which involved the participation of such departments as the Ministry of Science and Technology, State Economic and Trade Commission, Ministry of Foreign Trade and Economic Cooperation, and the Supreme People's Court, and etc., as well as the relevant experts and scholars for deliberation of the Detailed Rules for the Implementation of the Patent Law of the People's Republic of China (Draft for Examination). The Detailed Rules for the Implementation of the Patent Law of the People's Republic of China (Draft for Amendments), which were sent to the State Council for examination and approval by the legal affairs office of the State Council after considering comprehensively the opinions of the relevant parties concerned, were approved and adopted on June 15, 2001 by the State Council, will be implemented on July 1, 2001, the same day when the revised Patent Law began to be implemented.)


SUBJECT : INTELLECTUAL PROPERTY; PATENT LAW; REVISED
ISSUING DEPARTMENT : STATE INTELLECTUAL PROPERTY OFFICE OF THE PEOPLE'S REPUBLIC OF CHINA
ISSUE DATE : 06/26/2001
IMPLEMENT DATE : 07/01/2001
LENGTH : 2,157 words
TEXT :

The following principles have been followed in the revision of the Detailed Rules for the Implementation of the Patent Law of our country:

(A) Being consistent with the revisions on the Patent Law;

(B) Simplifying the procedures, being consistent with the target for accelerating the examination, and consistent with the target for facilitating the applicants; and

(C) Being coordinated with international trend, and fulfilling the international obligations of China.

It was another milestone for perfecting and improving the patent system of our country to promulgate the Detailed Rules for the Implementation of the Patent Law of our country. We hereby make a brief introduction to the main contents thereof as follows:

I. THE REVISIONS CONSISTENT WITH THOSE ON THE PATENT LAW

1. The provisions on the revocation procedures have been deleted.

The revocation procedures were canceled in the revised Patent Law, and corresponding revisions are also made in the new Detailed Rules, and the relevant provisions on the revocation procedures are also deleted (Articles 55, 56, and 57 of the existing Detailed Rules were deleted, and the relevant clauses relating to the application, examination, reexamination, and invalidation in the existing Detailed Rules were also revised).

2. The amount of awards and proportion of remunerations to the inventors or creators of the service invention or creation have been increased.

The new Detailed Rules have raised the amount of awards and proportion of remunerations (See Chapter VI of the new Detailed Rules: "Awards and Remunerations on the Inventors or Creators of the Service Invention or Creation") granted to the inventors or creators of the service invention or creation light of the spirits of the revised Patent Law, and by referring to the provisions of the Law on Science and Technology Progress, the Provisions on Promoting the Transformation of Achievements of Science and Technology, and other laws, regulations, and relevant policies.

3. The provisions on the departments in charge of patent work have been improved.

A lot of revisions have been made in the revised Patent Law on the handling of patent infringement disputes, and punishment to counterfeiting the patent of another person or passing off a patent.

The new Detailed Rules have, on the basis of the provisions of the revised Patent Law, and in combination with the actual patent administrative law enforcement conditions at present, made revision and perfection on the provisions in such aspects as the scope of disputes handled and conciliated by the departments in charge of patent work, and definitions on the acts of counterfeiting the patent of another person and the acts of passing off a patent, etc. The newly revised Detailed Rules have clearly prescribed that:

"The departments in charge of patent work as mentioned in the Patent Law and the present Detailed Rules shall refer to the departments in charge of patent work, which are established by the people's governments of the provinces, autonomous regions, and municipalities directly under the Central Government, as well as the people's governments of the districted cities that have large amount of patent management work and actual disposal ability".

This has clarified the establishment of institutions of local departments in charge of patent work, and strengthened the force of local departments in charge of patent work (See Chapter VII of the new Detailed Rules, "Protection on Patent Rights").

4. The corresponding provisions on the relevant utility model search reports have been added.

The revised Patent Law prescribes that, if any patent infringement dispute involves utility models, the applicant shall issue a "Utility Model Search Report" upon the request of the people's court or the department in charge of patent work. The new Detailed Rules have made corresponding revisions and added relevant provisions (See Articles 55 and 56 of the New Detailed Rules).

II. SIMPLIFYING THE PROCEDURES, AND SPEEDING UP THE EXAMINATION TO FACILITATE THE APPLICANTS

The new Detailed Rules have absorbed the many years' practical experiences of this Administration, and in combination with the international trend of the patent system, greatly improved the procedures for patent application and examination of our country, including:

providing a legal basis for electronic application (See Articles 3 and 16 of the new Detailed Rules);

perfecting the ways for writing the specifications and patent claims (See Articles 18, 22, and 23 of the new Detailed Rules);

simplifying the conditions on the request for patent split-up (See Article 42 of the new Detailed Rules);

clarifying the scope of preliminary examination (See Article 44 of the new Detailed Rules);

clarifying the time for modifying the application for patent (See Article 41 of the new Detailed Rules); and

perfecting the procedures for reexamination and invalidation (See Chapter IV of the new Detailed Rules "Reexamination on the Application for Patents and Invalidation of Patent Rights").

In order to facilitate the applicants, patent owners, and the parties concerned, and be conducive to accelerating the examination, the following revisions have also been made:

1. The departments of examination and approval for transferring the right of application for a patent or patent right to foreigners have been clarified:

Paragraph two of Article 10 of the Patent Law prescribes that any Chinese entity or individual shall be subject to the approval of the competent departments of the State Council when it/he transfers the right to apply for a patent or patent right to any foreigner. In order to facilitate the relevant parties, and improve the administration efficiency, the new Detailed Rules prescribe that:

"In case any Chinese entity or individual transfers the right to apply for a patent or patent right to any foreigner, which shall be subject to the approval of the competent foreign trade and economic department of the State Council together with the administrative department of science and technology of the State Council." (Article 14 of the New Detailed Rules)

2. The relevant provisions on paying fees have been further clarified:

According to the existing Detailed Rules, the fees for maintaining the application for invention shall be paid once a year, even if no authorization is obtained, such fees shall also be paid. The new Detailed Rules have changed this way of payment, and prescribe that the maintaining fees shall be paid at the time when the formalities for authorization are gone through. Namely, if there is no authorization, there is no need to pay the maintaining fees. The new Detailed Rules have further clarified other issues concerning the payment of fees (See Chapter IX of the new Detailed Rules).

3. The problem for linking up with other relevant procedures has been solved:

In the practice of civil procedures, if some courts rule to take preservation measures for a patent right or adjudicate to transfer a patent right to any other person, execution thereof requires the assistance of by this Administration. But the existing Detailed Rules do not prescribe how this Administration should assist in the execution. The new Detailed Rules add the relevant provisions, prescribing that:

"If a people's court rules to take preservation measures for a patent right in the trial of civil cases, the administrative department of patent of the State Council suspends the relevant procedures for the preserved patent right in assisting the execution. If the time limit for preservation expires, and the people's court does not rule to continue the preservation measures continuously, the administrative department of patent of the State Council shall resume the relevant procedures automatically." (See Article 87 of the new Detailed Rules)

III. COORDINATING WITH THE INTERNATIONAL TREND, AND FULFILLING THE INTERNATIONAL OBLIGATION OF OUR COUNTRY

1. China will soon become a member of the WTO, so we shall try to make the patent system of our country consistent with the provisions of the Agreement on Trade-Related Aspects of Intellectual Property Rights (hereinafter referred to as TRIPS).

After the Patent Law of China was revised, the contents thereof have become basically convergent with the requirements of the TRIPS, but some of the provisions thereof are not clear enough.

Firstly, Article 5 of the Patent Law prescribes that patent right shall not be granted to any invention-creation that violates any of the laws of the state, while Article 27 of the TRIPS prescribes that some inventions could not be excluded from the scope of patentability only because the domestic law of a member state prohibits the use of such inventions. Therefore, the new Detailed Rules prescribe that:

"'An invention-creation that violates the laws of the State' mentioned in Article 5 of the Patent Law shall not include the invention-creations the use of which is prohibited by the laws of the State."(Article 9 of the new Detailed Rules)

Secondly, there are no provisions on the special restrictive conditions for the compulsory license of semi-conductor technologies as prescribed in Article 31 of the TRIPS in the provisions on compulsory license in Chapter VI of the Patent Law. Therefore, a new provision is added to the new Detailed Rules that:

"The decision of the administrative department of patent of the State Council on granting the implementation of compulsory license shall restrict the implementation of the compulsory license only to supply the domestic market; if the invention-creation involved in a compulsory license is semi-conductor technology, the implementation of the compulsory license shall be limited to the public non-business use only, or the use for granting remedies to the anti-competition acts that are determined through judicial procedures or administrative procedures." (Paragraph 4 of Article 72 of the new Detailed Rules)

2. China officially became a member state of the Patent Cooperation Treaty (PCT) in 1994. The relevant provisions of the Patent Law of China and its detailed rules shall be consistent with the provisions of the international conventions China has joined in, so as to fulfill the international obligations of China, and to offer convenience for the applicants, owners of patent right, and the relevant parties. Therefore:

(1) Modifications have been made on the writing of specifications, patent claims, and excerpts by referring to the PCT (See Articles 18, 24, and 25 of the new Detailed Rules).

(2) According to the PCT, the time limit involving the procedures for both parties shall not be extended, which is for the purpose of preventing either party from postponing the examination of a request for invalidation by making use of the extension. The new Detailed Rules have made supplementary provisions on it (See Article 70 of the new Detailed Rules).

(3) China joined the PCT in 1994, and the SIPO of China has become a Reception Office of the PCT, International Searching Authority, and International Preliminary Examination Authority, and has the obligations to fulfill the various functions as prescribed in the Treaty.

In addition, any international patent application submitted through the ways as prescribed in the PCT needs to be handled in light of the special procedures different from that for domestic application during the application enters into the state of China. Therefore, Paragraph Two of Article 20 of the revised Patent Law prescribes that:

"Any Chinese entity or individual may file an international patent application in accordance with the relevant international treaties the People's Republic of China has acceded to. If the applicant files an international patent application, it/he shall abide by the preceding provisions."

Paragraph Three prescribes that:

"The administrative department of patent of the State Council shall handle the international patent applications in accordance with the relevant international treaties the People's Republic of China has acceded to, the present Law, and the relevant provisions of the State Council."

In order to implement the provisions of the revised Patent Law, a new chapter of special provisions on international application has been added to the new Detailed Rules on the basis of absorbing the relevant provisions of the former China Patent Bureau, and in combination with the up-to-date development of the PCT system, so as to specify concretely the special handling procedures for the relevant international patent applications (See Chapter X of the new Detailed Rules).

(4) China officially became a member state of the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure in 1997. Therefore, modifications have been made on the new biological materials involved in the inventions applied for patents that are consistent with the said Treaty (See Articles 25 and 26 of the new Detailed Rules).

IV. OTHER REVISIONS

In order to clarify the legislative basis for the examination guidelines, relevant provisions have been added to the new Detailed Rules on the power to formulate the examination guidelines (See Article 121 of the new Detailed Rules).

Apart from the aforesaid revisions, the new Detailed Rules have also made revisions on patent registration and public notice of patents (See "Patent Registration and Public Notice of Patent" of Chapter VIII of the new Detailed Rules).

The new Detailed Rules shall be implemented as of July 1, 2001. The relevant transitional provisions on the patent application submitted before July 1, 2001 and the patent rights obtained before that day shall be announced by the SIPO additionally.