China's patent law is undergoing revision for the third time. On August 29 2008, the standing committee of the People's Congress published the draft patent law amendments for public discussion and opinion. The draft makes significant changes to the current law. Some of the more important proposals are set out below.
The absolute novelty standard has been altered. Currently, an invention or utility model lacks novelty if it has been disclosed anywhere in the world in a publication or in China by public use or other means. To bring China in line with patent practice worldwide, the draft adopts the absolute novelty standard such that novelty is lost if it forms part of the prior art.
Higher patentability thresholds for design patents have been introduced. Though the number of design patent applications is huge, a high proportion of these are of low quality. To improve the situation, the draft requires features of a design patent to be significantly different from those of prior designs, and not simply "not identical or similar" as is currently the case. Furthermore, no patent shall be granted for two-dimensional printed matter designs made up of patterns or colours or their combination, if they are primarily for identification purposes.
For inventions accomplished in China, it will no longer be compulsory for Chinese applicants to file the applications first in China. However, it is necessary to undergo a prior security/secrecy examination conducted by the Chinese Patent Office is required.
To protect the rich biological and genetic resources of China, and in accordance with the relevant provisions of the Convention on Biological Diversity, the draft requires the origin of the genetic resource to be disclosed in the specification if the invention was created in reliance of the genetic resource.
New grounds have been introduced for the grant of compulsory licences: if the exercise of the patent is adjudicated to be an act restraining competition; a pharmaceutical patents involving an export to a lesser developed country in need; and semi-conductor related patents (under certain conditions).
The prior art defence will be explicitly made available as a defence in court, though certain local courts have already been adopting this practice. At present, in a jurisdiction that is not adopting this practice, a defendant has to invalidate the patent first at the Patent Reexamination Board and then submit this decision to the court as a defence. However there is no guarantee that the Court will stay the proceedings.
The penalty fine for the act of forging a patent or counterfeiting a patented product of another person has been increased. Furthermore, the statutory damages are increased from the maximum of Rmb500,000 (according to the Supreme Court's judicial interpretation) to Rmb1 million ($73,000 to $146,000).
New exemptions from patent infringement have been introduced. It is not an infringement to make, use or import a patented pharmaceutical or medical device solely for acquiring information necessary for regulatory approval.
The draft also makes some minor changes to design law: the brief description of the design features is no longer optional but compulsory; one design application for multiple similar designs for same product is now possible; an offer for sale is also deemed an infringement act; and a search report must be provided in order to enforce a design patent.
According to present time-table, it is expected that the new patent law will be passed in early 2009.
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| Howard Tsang |
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