Some Opinions on the Fourth Amendment to the Patent Law

Legal Analysis: The Patent Law has been amended four times, most recently in 2020. On August 11, 1950, the Government Council promulgated the "Interim Regulations on the Protection of Invention Rights and Patent Rights," and on October 9, 1950, the Financial and Economic Committee of the Government Council promulgated the detailed rules of the above regulations.

On March 19, 1985, China formally acceded to the Paris Convention for the Protection of Industrial Property (1967 Stockholm Act). The Patent Law of the People's Republic of China came into force on April 1, 1985. The "Decision of the Standing Committee of the National People's Congress on Amending the Patent Law of the People's Republic of China" was adopted by the Sixth Session of the Standing Committee of the Eleventh National People's Congress of the People's Republic of China on December 27, 2008, and is hereby promulgated to take effect on October 1, 2009.

On October 17, 2020, the 22nd Session of the Standing Committee of the 13th National People's Congress passed the decision to amend the Patent Law of the People's Republic of China, which will come into force on June 1, 2021.

Legal basis: Patent Law of the People's Republic of China Article 1 This Law is enacted in order to protect the legitimate rights and interests of patentees, encourage inventions and creations, promote the application of inventions and creations, improve innovation capabilities, and promote scientific and technological progress and economic and social development.

Key Points of the Fourth Draft Amendment to the Patent LawKey Points of the Fourth Draft Amendment to the Patent Law (Draft Amendment to the Fourth Amendment to the Patent Law) Article 2, Paragraph 4 of the Patent Law refers to a new design that is aesthetically pleasing and suitable for industrial application made on the whole or part of the shape, pattern or combination thereof, as well as the combination of color and shape and pattern. Among them, the whole or part of the content is newly revised. According to the SIPO's interpretation, partial designs in China still exclude the following two situations:

1. If the design cannot occupy a certain physical space, it cannot constitute a partial design; 2. The partial design shall be relatively independent. For example, the nib of a fountain pen can be considered as a partial design and remains relatively independent. Detachable components in an assembly, on the other hand, can be protected as a design as a whole or as a part.

Presumably, the scope of a partial design should be clearly defined in a brief description. In ** or **, the dotted line and the dashed part will not be considered as the scope of protection of the partial design. From an international perspective, allowing a part of a product design to be the subject of a design can lower the threshold for international designs to enter China, especially those in the United States.

In China's patent examination practice, a large number of design patent applications claiming U.S. priority have been rejected because their subject matter is non-grantable. These applications are often made as design applications as part of the overall design, including but not limited to, the inseparable parts of the components, or the patterns in the ornamental design.

At present, such subject matter is not licensable in China. At present, design patent applications in China are only subject to preliminary examination, but not substantive examination. During the preliminary examination, the examiner will only make a refusal due to the subject matter and form issues.

Partial designs are often the main reason for the rejection of a design patent application. Therefore, allowing a part of a product design to be the subject matter of licensability would greatly increase the probability of granting a design claiming U.S. priority. However, at the domestic level, the above amendments may lead to a reduction in the quality of design applications.

Since design patent applications in China do not need to go through the substantive examination procedure for novelty or inventive step (which is currently stipulated by law, whether there will be substantive examination procedures in the future will be subject to the Fourth Revision of the Patent Law), if a part of the design is allowed to be the subject matter of licensability, there may be applications for a part of the subject matter of the disclosed patent or prior art, which will lead to the proliferation of such applications. In this case, the potential value of the granted design patent may be reduced.

Hello: The main content of this amendment is that the patent transfer requires both parties to sign the "Patent Right Transfer Contract", and then go through the procedures for changing the bibliographic items with the State Intellectual Property Office. 1. The application form for the change of bibliographic items shall be submitted.

2. Pay a bibliographic change fee of 200 yuan within one month from the date of the request. 3. Supporting materials ("Patent Right Transfer Contract"): If the patentee submits a request for change due to the transfer of rights or the transfer of rights, the transfer or gift contract shall be submitted.

If the contract is concluded by a unit, it shall be stamped with the official seal of the unit or the special seal of the contract. Where a citizen concludes a contract, it shall be signed or sealed by the citizen. If there are multiple patentees, proof of the consent of all patentees to the assignment or gift shall be submitted.