Highlights of the Recent Amendment to China’s Patent Law (Regarding Application and Prosecution)

The Fourth Amendment to China’s Patent Law was approved on October 17, 2020 and will take effect from June 1, 2021. Main changes in the aspects of filing and prosecution are as follows:

1. Priority Claim and Document

a. Design Applications Now Entitled to Claim Domestic Priority

According to the Amendment, an Applicant will be allowed to, within 6 months from filing his/her first-filed design patent application in China, file a second design application claiming domestic priority to said first-filed Chinese design application.

The above new practice is in tandem with the scenario for claiming international priority.

b. Time Limit for Submitting Certified Priority Documents Changed

According to the Amendment, a domestic priority claim, like an international priority claim, must be made in writing at the date of filing, but need not be supported by submission of any document.

In addition, the time limit for submitting a certified priority document for an invention patent or a utility model patent application will be changed to sixteen months from the earliest priority date.

However, the time limit for submitting a certified priority document for a design application remains the same, which is three months from the earliest priority date.

2. Strengthen Design Patent Protection

a. Partial Design Applications

The Amendment redefines a “design” as any novel design created with respect to the shape, pattern or color of a portion of an article of manufacture or the entire article, or any combination thereof, thereby creating eye-appealing aesthetic effect. It means that a partial design will become a patentable subject matter from June 1, 2021.

The CNIPA is expected to release more regulations on the formality requirements of partial design applications and the relevant examination criteria in the coming months.

b. Extension of the Duration Term of Design Patents

According to the Amendment, the duration term of a design patent will be extended from 10 years to 15 years.

The CNIPA will later determine whether or not the duration term of a design patent that has not expired on June 1, 2021 will be automatically extended to 15 years, and the amount of 11th-15th annual fees payable.

3. Patent Term Compensation and Adjustment Available

a. Patent Term Adjustment for Unreasonable Delay in Examination

According to Article 42.2 of the amended Patent Law, where an invention patent application has been filed for more than 4 years and a substantive examination request thereof has been submitted for over 3 years, the Applicant is allowed to request for patent term adjustment if there is an unreasonable delay in examination, except for the circumstance where the delay is caused by the Applicant himself/herself.

Although the CNIPA has yet to shed more light on the so-called “unreasonable delay”, we believe the Applicant may, after June 1, 2021, seek patent term compensation when applicable and if necessary.

b. Compensation of Patent Term for New Pharmaceuticals-Related Patents

According to Article 42.3 of the amended Patent Law, to compensate for the lengthy regulatory approval period that the Patentee might encounter, which inevitably shortens the duration term of a pharmaceutical-related patent, the Patentee is allowed to request for a patent term extension for a maximum of 5 years as the compensation period. However, for a pharmaceutical-related patent calling for a new drug that has been put on the market, the total applicable patent term shall not exceed 14 years.

It has not yet been defined on whether or not the compensation period applies to all new drug patents.

4. One More Exception to Loss of Novelty

The amended Patent Law introduced one more exception to loss of novelty, which is when the publication of an invention is made during times of national emergency or extraordinary state of affairs.