China on the way to a high-technology country: The legal policy perspective
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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

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China on the way to a high-technology country: The legal policy perspective

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China on the way to a high technology country the legal policy perspective

China on the way to a high-technology country: The legal policy perspective

Stefan Luginbuehl

Lawyer, International Legal Affairs


China on the way to a high technology country the legal policy perspective

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


China on the way to a high technology country the legal policy perspective

Evolution of patent applications filed with SIPO


China on the way to a high technology country the legal policy perspective

Evolution of patents granted by SIPO


China on the way to a high technology country the legal policy perspective

Filing strategy of Chinese companies with the EPO

2008

2009

2010*

2007

383

403

402

"Euro-direct"

396

"Euro-PCT"

749

1127

1309

1452

Total

1510

1608

1854

1145

January to November 2010


China on the way to a high technology country the legal policy perspective

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


China on the way to a high technology country the legal policy perspective

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


China on the way to a high technology country the legal policy perspective

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.


China on the way to a high technology country the legal policy perspective

"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 anyentity 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.


China on the way to a high technology country the legal policy perspective

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 applicanton 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.


China on the way to a high technology country the legal policy perspective

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.


China on the way to a high technology country the legal policy perspective

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.


China on the way to a high technology country the legal policy perspective

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 contentof the technical solution is completed within the territory of China.


China on the way to a high technology country the legal policy perspective

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 isnecessary if an applicant files an international application with SIPO


China on the way to a high technology country the legal policy perspective

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


China on the way to a high technology country the legal policy perspective

Amendments in order to protect national defence interests and other interests of the state

Procedure (Rule 9 ImplReg)

  • If the applicant has receiveda 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


China on the way to a high technology country the legal policy perspective

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)


China on the way to a high technology country the legal policy perspective

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 losses2. Profits of the infringer3. Multiple licencing fees4. 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


China on the way to a high technology country the legal policy perspective

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


China on the way to a high technology country the legal policy perspective

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.


China on the way to a high technology country the legal policy perspective

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


China on the way to a high technology country the legal policy perspective

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))


China on the way to a high technology country the legal policy perspective

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


China on the way to a high technology country the legal policy perspective

Thank you for your attention

Stefan Luginbuehl, Ph.D. Lawyer, International Legal AffairsEuropean Patent Office, Munich

Tel: +49-89-2399 5290Fax: +49-89-2399 5219E-mail: [email protected]

www.epo.org


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