One of China’s key strategic goals is the promotion and development of innovation as a means of securing sustainable economic development. In this context, it is important that its Patent Law keep pace with international developments. The newly amended Patent Law, which will come into force on 1 June 2021, strengthens protection generally and seeks to bring it into line with international practice. This article focuses mainly on the amendments relating to design patents.
Key Amendments
Three of the key amendments discussed below relate specifically to design patents, the other five relate to all patents, including design patents. The amendments relating specifically to design patents deal with: (1) protection for partial designs; (2) the establishment of a domestic priority system; and (3) extension of the protection period. The general provisions deal with (1) grace period in national emergencies; (2) open licences; (3) evaluation reports in patent infringement disputes; (4) infringement compensation; and (5) Statutory Limitation period for patent actions.
1. Amendments relating specifically to design patents
This amendment provides for protection of the whole or partial shape or pattern of a product or a combination thereof, as well as a combination of colour in relation to the whole or partial shape or pattern. The extension of protection to partial designs will provide more comprehensive protection and bring China’s law into line with international practice.
As early as 1976, the United States introduced the protection of partial designs; Japan, South Korea, the European Union and other countries and regions followed. The extension of protection in the fourth amendment of China’s Patent Law will meet the urgent needs of Chinese innovation entities for partial design protection.
Prior to the amendment, China protected only the design of whole products, which meant that innovative design features within the overall design, which are easily imitated through simple patchwork and replacement, were not protected. In light of this, it was difficult to obtain effective protection for designs, and this, in turn, had a negative effect on the development of China’s design innovation industry. With the introduction of ‘partial design’ protection into the Patent Law, applicants will no longer need to submit multiple separate applications in order to protect different configurations of the product. The scope of protection will be increased and patent portfolio costs reduced.
The protection period has been extended by five years to encourage innovation; also in preparation for China's accession to the Hague Agreement. Among the Contracting States of the Hague Agreement, the minimum protection period for designs is 15 years. As for PCT applications, after accession to the Hague Agreement, an applicant seeking protection in different contracting states will be able to submit an international application to the International Bureau in the specified language when submitting the design application. After obtaining the international registration, it will not be necessary to submit separate applications in the different countries. This will greatly facilitate international registrations for Chinese applicants.
The protection period has been extended by five years to encourage innovation; also in preparation for China's accession to the Hague Agreement. Among the Contracting States of the Hague Agreement, the minimum protection period for designs is 15 years. As for PCT applications, after accession to the Hague Agreement, an applicant seeking protection in different contracting states will be able to submit an international application to the International Bureau in the specified language when submitting the design application. After obtaining the international registration, it will not be necessary to submit separate applications in the different countries. This will greatly facilitate international registrations for Chinese applicants.
2. General amendments
The amended Patent Law provides that an invention-creation that is the subject of a patent application shall not lose its novelty as a result of having been published in the public interest within a period of six months before the filing date, during a state of national emergency.
In light of the ongoing COVID-19 pandemic, this will encourage applicants to quickly disclose innovations that are in the public interest, as their priority rights will be protected.
These articles make provision for an ‘open licence’ system, whereby the patentee makes a statement to the CNIPA that anyone wishing to implement the patented subject matter can obtain a licence to do so by paying the prescribed licence fee.
Article 50 provides for the declaration and withdrawal of an open licence. Article 51 provides for the acquisition of an open licence, and the reduction or exemption of annual patent fees during the term of the licence. Article 52 provides for the settlement of open licence disputes. In the event of a dispute, the parties shall negotiate to resolve the issue; if they are unwilling to do so or fail to reach agreement, they may request mediation from the Patent Administration Department of the State Council, or file a lawsuit in a people’s court.
The ‘open licence’ system will encourage technology transfer and the use of patented technology, and benefit both patentees and potential licensees.
Currently, in proceedings involving a utility model or design patent, a court or administrative department can require the patentee or an interested party to produce a CNIPA patent right report, which will then serve as evidence. The amended provision gives the patentee, any interested party or the alleged infringer the right to request the patent right report. This provides more options for the patentee, any interested party, and even the alleged infringer, to defend their rights more efficiently and economically.
In order to strengthen the protection of the legitimate rights and interests of patentee, the provision relating to compensation has been strengthened and extended. The range of statutory compensation, currently 10,000 (lower limit) to 1,000,000 (upper limit) yuan, has been increased to 30,000 (lower limit) to 5,000,000 (upper limit). In appropriate cases, the court can award punitive damages of more than one and less than five times the amount of the calculated damages.
The General Principles of Civil Law, which came into effect on 1 October 2017, extended the Statute of Limitations period for ordinary litigation from two to three years. The limitation period for patent cases has not, however, been clear. To clarify the issue, the amended Patent Law stipulates that the limitation period for patent infringement cases is three years.
The amended law will provide design patent applicants greater flexibility in practice. They should be taking steps to reformulate their patent protection strategies in light of it.
