Patent Law Amendments Now in Effect

08 November 2012

On September 29, the State Intellectual Property Office (SIPO) and Supreme People’s Court (SPC) both issued rules addressing a number of transitional issues arising incidental to the amendment to the Patent Law.

The rules issued by SIPO include the “Transitional Measures for Implementing the Amended Patent Law” and “Notices regarding Several Matters Related to Implementing the Amended Patent Law” (collectively, the SIPO Rules).

According to Baker & McKenzie lawyers Joseph Simone and Jing He in Hong Kong, the most important provisions in the SIPO Rules clarify the retroactive effect of the revised Patent Law and introduce various filing requirements that have immediate effect. The SPC’s notice likewise deals with retroactivity questions arising in the course of enforcement.

Simone and he note that, under the SIPO Rules, applications filed on or after October 1 are subject to the new Patent Law and that the prior law will be applied to applications filed prior to October 1.

“There exists some ambiguities as to whether applications filed in China after October 1, but with priority dates before this time are subject to the new or the prior versions of the Patent Law,” they said. “At present, officials have informally indicated that such applications are likely to be governed by the new Patent Law.”

Simone and He also note that the SIPO rules clarify that the provisions in the new law on compulsory licensing are retroactive to patents issued before October 1.

“The SIPO Rules also allow administrative authorities responsible for patent matters (i.e., the “Intellectual Property Offices” at various levels) to apply the new law’s provisions when dealing with patent infringements,” they said. “Thus, the owner of an existing design patent can immediately enforce its rights against infringers based on mere offers to sell infringing goods, notwithstanding the fact that the prior Patent Law did not prohibit offers to sell. Further, patent owners can now rely on the prior art defense in responding to administrative enforcement actions.”

Further, they say, the SIPO Rules also allow administrative authorities to apply the Bolar Exemption as well as other exemptions set out in Article 69 of the new law when dealing with infringement actions. Among these exceptions are those effectively allowing the use of patented technology for use in obtaining regulatory approval for pharmaceutical products or medical devices. Such use may include both manufacturing and importation of goods incorporating the patent.

“This new exception has attracted particular concerns from many research-based pharmaceutical companies,” they said. “The SIPO Rules failed to introduce any balancing mechanisms or other reassurances that might help to avoid the creation of loopholes, and it is hoped the future Implementing Regulations to the Patent Law will do so.”

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