Wanhuida Intellectual Property - China
On 1 June 2021, China’s fourth amendment of the Patent Law came into effect, yet the new implementation rules for this law are still under revision and are unlikely to be published any time soon. To help stakeholders navigate the landscape during the transition period, the China National IP Administration (CNIPA) promulgated the interim measures for examination-related matters in implementing the revised patent law on 24 May 2021, which came into effect at the same time as the Patent Law.
According to the interim measures, the following newly amended provisions of the Patent Law have been implemented:
- Articles 20.1 and 25.1(5) will be applied by the CNIPA in the preliminary examination, substantial examination and review procedure;
- the time limit for submitting priority documents in Articles 30 now applies to patent applications filed after 1 June 2021; and
- Article 66 may be cited as the legal basis to request patent evaluation report from the CNIPA.
Applications or requests filed on the basis of other provisions including Articles 2(4), 24(1), 29.2, 42.2, 42.3 and 50 may be accepted but they will not be examined until the implementation rules take effect. Practitioners have raised some concerns about this process, because it may put patentees in a difficult situation. A patentee that postpones filing until the promulgation of the implementation rules will forego the benefits of filing on an earlier application date. Nevertheless, without detailed rules to follow, application documents filed prior to the promulgation of the new rules may be found to be defective on a later date if they fail to comply with the finalised implementation rules, which could trigger amendment or rejection. Some practitioners therefore advocate that the CNIPA adopt a less stringent examination criteria for those early applications to protect the interests of rights holders. It remains to be seen how these issues are to be addressed in the new implementation rules and examination guidelines.