China’s Revised Patent Law Passed

On 17th October 2020 the Standing Committee of China’s 13th National People’s Congress (NPC) approved the Draft Amendments to China’s patent law. The amendments will take effect from 1st June 2021.

The passing of the amendments follows the NPC seeking public feedback on draft amendments as previously briefed. The changes of most interest to foreign applicants are:

• Allowing damages to be multiply increased up to 5 times the determined actual amount in the case of wilful infringement, in addition to increasing the maximum statutory damages available;
• Reducing the burden of proof by allowing the People’s Court to order the alleged infringer to provide relevant accounts and associated information;
• Increasing the period in which a copy of the priority document needs to be supplied from 3-months after filing to 16-months from the priority date;
• Supplementing the exceptions to novelty defeating disclosures with a 6-month grace period for disclosures made for public interest purposes during a national emergency or extraordinary situation;
• Allowing for the possibility of patent term extensions on the basis of unreasonable delays in prosecution where the patent only achieves grant more than 4-years after filing and 3-years after requesting examination;
• Allowing for the possibility of patent term extension on the basis of obtaining regulatory approval for pharmaceuticals, with the maximum extension being the lesser of an extra 5-years or 14-years from market entry;
• Increasing the Statute of Limitations period for bringing a lawsuit from 2-years to 3-years from when the patentee knew or should have known of the infringement and the infringer;
• Introducing an open licence system, whereby if the patentee declares that their patent can be licenced by anyone the SIPO reduces or eliminates renewal fees. (New Zealand had similar ‘licences of right’ provisions under the Patents Act 1953, but it is not provided for under the Patents Act 2013;
• Increasing the term for designs from 10-years from the filing date to 15-years from the filing date – it is notable that this would satisfy a key requirement for China to join the Hague Agreement;
• Allowing partial designs – which are already allowed for in major jurisdictions such as the EU, US, UK, Canada, Singapore, Japan and South Korea.

Author: Quinn Miller

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