On July 31, 2006 SIPO promulgated the Draft of Amendments to the Patent Law for public comments. Draft amendments to the law were handed to the State Council for deliberation on December 27, according to the State Intellectual Property Office (SIPO), which was in charge of drafting the amendments.
SIPO spokesman Yin Xintian said that half of the current 69 provisions will be changed.
If the draft will be adopted, what will change? The article 'China: Third Time Lucky' by Yong Li Wenping Chen of King & Wood published for Managing Intellectual Property sheds light over the possible outcome:
- the absolute novelty standard (currently it is a blended novelty standard; where prior art includes publication inside or outside China, but public use or other means of disclosure only in China); in the draft prior art is broadened to include public use or other means of disclosure outside in China;
- a design patent shall not be identical or similar to a prior design, but it shall also be significantly different from element combination of prior designs;
- the optional brief description of the design under the current rules will become compulsory for design applications;
- a design application for multiple similar designs of a product becomes possible.
- infringement determination standards will be incorporated, that strengthen patent protection, extend the scope of patent infringement exemptions and further clarifies stipulations on compulsory licenses;
- only inventions made during execution of employment duty or made mainly by using the employer's technical secrets are statutory service inventions. However, inventions made mainly by using the employer's other materials and technical means will be deemed as non-service inventions unless otherwise agreed. In the latter case, the employer has a non-exclusive and non-assignable right to use the inventions.
- SIPO is getting more powers, including examining witnesses and other relevant parties; reviewing and making copies of relevant contracts, receipts, accounting books and other documents; conducting inspections of premises; seizing infringing goods and specialized equipment for infringement; issuing orders to stop infringement; and confiscating infringing goods and specialized equipment for infringement in severe cases;
- the doctrine of equivalents, prosecution history estoppel, and defence based on practicing prior art in infringement are incorporated in the draft. Infringing equivalents are limited to equivalents of technical features rather than the whole solution, and the well-known function-way-effect test is adopted. Any written amendments or statements that restrict the patent scope which the patentee made during the patent prosecution or invalidation proceeding to comply with the granting requirements will have estoppel effects. No infringement shall be found if the alleged infringing product or process belongs to prior art;
- patentee is liable for bad faith actions;
- for injunctions issued by a court or a decision of an administrative authority, if the same infringer conducts a similar act infringing the same patent, the patent administrative authority may take the following actions: ordering the infringer to stop the infringement and publishing the order; confiscating the illegal revenue; and imposing a fine of up to three times the illegal revenue. Where there is no revenue, the fine can be up to Rmb100,000;
- pre-suit injunctions and property preservation orders are available under the current Patent Law, and include evidence preservation;
- the provision on statutory damages is incorporated in the Draft, and the upper limit is increased to Rmb1,000,000;
- parallel import is explicitly defined as non-infringement, and the Bolar exception is adopted for pharmaceutical related patents. According to the Draft, an entity may make, use or import patented pharmaceuticals or medical devices solely for acquiring information necessary for obtaining regulatory approval, and a third party may make or import and sell the patented pharmaceuticals or medical devices to that entity. The Bolar exception in effect shortens the protection term of pharmaceutical and medical device patents. However, the Draft has no corresponding provisions for possible extensions of the term of those patents. Even worse, the Draft does not provide a time limit for starting activities under the Bolar provision;
- after five years from knowledge of the infringement, no injunction may be issued if the infringer is willing to pay royalties as agreed by the parties or decided by the court.