After major revisions in 1992 and 2000, the latest iteration of China’s patent law becomes effective October 1. The new amendments change or eliminate many provisions in the 2000 revision, according to Wenting Cheng, research associate at the Intellectual Property Development Research Center in China’s State Intellectual Property Office (SIPO). Unlike the first two revisions, which were focused mainly on fulfilling China’s international commitments, the third revision responds to China’s internal demands to increase innovation capacity and strengthen patent protection. To achieve these goals, the legislation encompasses three major groups of changes: 1) substantive requirements for patent grants — specifically, patentability and subject matter under protection; 2) post-grant enforcement, including determination of infringement and calculation of damages upon infringement; and 3) adaptation of Chinese patent law to international norms on the protection of IP.

Language defining the scope of subject matter has been changed from “relative” to “absolute” novelty based on three criteria: 1) prior application, 2) publication, and 3) prior use and any other means. “In other words, the scope of disclosure by prior use and any other means has been extended from domestic (relative) to international (absolute),” Cheng explains. This change is designed to respond to China’s growing role in globalization by increasing the threshold and improving the quality of patents granted, she adds. In addition, the new amendments address the “skyrocketing” applications for design patents by adding a requirement that the design must be “substantially different” from any prior designs or a combination of the features of prior designs and “must not be in conflict with any prior legitimate rights of any other person,” Cheng says. In the new amendments, prior design refers to “any design known to the public before the filing date of the patent application in China or abroad,” she explains.

Major changes also occur in the post-grant stage, since there is no substantive examination in granting design patents in China. To identify substantial difference, the draft of the new Guidelines for Examination introduces the concept of “identical designs” and “conflicting application.” Identical designs refer to the notion that the design examined and the design compared cover the same class of products and encompass identical features. The previous Guidelines for Examination, adopted in 2006, applied the standard of conflicting application to an invention or utility model application, while the new draft extends the scope of conflicting application designs to “an identical design application that was filed previously by any other person with the patent office and published on or after the filing date of the application being examined,” Cheng explains. With respect to a conflict with prior rights, the changes require that “a design patent shall be invalidated when identified in conflict with a legitimate right of others which is obtained before its filing date,” she says. “Legitimate right” includes trademarks, copyrights, and other rights, such as enterprise trade names; and “in conflict with” refers to the idea that a design uses — without the authorization of the owner — subject matter with a prior right that a patent would consequently impair.

Source: IP Watch

Posted September 9th, 2009 under Tech Transfer

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