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CHINA: Impacts from New Amended China Patent Law

March 23, 2021

On October 17, 2020, China’s Patent Law (“CPL”) was reviewed after 12 years, and this new amendment will take effect on June 1, 2021.

Major amendments to China Patent Law

Design patents:

            1.- Definition of designs has been amended include: new design of the shape in whole or in part, pattern, or combination of the color with shape and pattern, which are fit for industrial application.

            2.- Under the revised version of the law, partial designs are also patentable.

            3.- The protection of design patent is prolonged from 10 to 15 years which is aligned with the protection according to Hague Agreement.

Patent term extension – China’s phase one agreement commitments

            Under the revised CPL, the invention patent has been granted 4 years after the filing date and 3 years have passed from the request for substantive examination, the CNIPA, will deal – upon the request of the patentee – with the unreasonable delay in granting the invention patent.

               However, with reference to pharmaceutical patents, it is prescribed that to compensate for the delay caused by the marketing approval process, the CNIPA, upon request of the patentee, shall extend the patent term for a maximum of five years, while the total effective patent term after the new drug is authorized to be on market shall not exceed 14 years.

Novelty disclosure

            The revised CPL ensures that the invention does not lose its novelty in the first six months after filing even this invention should public for public interest purpose, such as during time of exceptional circumstance or national emergency.

            This protection is a further step to protect patentees interests and rights at the pandemic time.

Damages and evidence

          The amended CPL provides an increase of the punitive damages for intentional infringements of patent.  It states “illegal earnings shall be confiscated and, in addition, a fine of not more than five times of the amount of illegal earnings shall be imposed, while, if there are no illegal earnings or the illegal earnings are less than RMB 50,000 (about USD 7,450), the imposed fine shall be no more than RMB 250,000 (about USD 37,260)”.

            Beside the punitive damages, the amended CPL provides also a statutory damages which is imposed when the amount of the compensation is difficult to determine due to the infringement. The statutory damages is based on the losses of the rights holder, the profits which the infringer has earned through the infringement and royalty. This compensation may set from RMB 30,000 to a maximum of RMB 5 millions.

Patent linkage – pharmaceutical industry

This amended law introduces also a patent linkage, which is  accorded to the relevant patentee or interested party, both of them may file a lawsuit before the court of Patent Administration Department of the State Council against who applies for marketing authorization drug which is felt under the scope of the protection for a patented drug.

Impacts on patent protection in China

These major amendments of CPL  impact on the Chinese legal system which is able to protect the patentees rights and the most important in to attract new patent fillings. The law pursues these goals by increasing infringement penalties, thus strengthening their deterrent effect, and by further regulating the burden of proof, improving the administrative law enforcement, and enhancing the effectiveness and efficiency of the patent protection regime.

The impact of the new Chinese Patent Law will have to be evaluated based on the implementing regulations and practical application of the law. Particular attention must also be paid to the courts’ decisions on patents’ infringement cases. These new amendments will also generate certain regulations to facilitate the judicial procedure and persuade the stop of infringement in China.