The new Chinese Patent Law An overview

1. The new Chinese Patent LawAn overview Dr. Thomas Pattloch, LL.M.Eur., German Attorney at Law Senior Counsel TaylorWessing Former Intellectual Property Officer EU Delegation Beijing

2. Background • National IP Strategy 2006-2020 • 11th National Program for Long- and Medium-term Scientific and Technological Development 2006-2010 • 11th Five-year Plan for National Economic and Social Development 2006-2010

3. Objectives • Patent quality • Technology transfer and independent innovation • Strengthen enforcement • Introduce better balance of interests • Bio-piracy/protection of China’s resources • Compulsory licensing

4. Patent quality • Absolute novelty standard introduced, Articles 22(5), 23(3) • Patent evaluation report introduced in infringement procedures including design patents or utility models, Article 61(2) • “Technicality” requirement i.e. European approach now explicitly stipulated in the law, Article 2 • Stricter requirements on patent claims, Articles 26(4), 27(2), and design patent applications, Articles 27(1), 59(2) • Restriction of scope of patentability for designs for two-dimensional designs “mainly serving as an indicator”, Article 25(6) • Double patenting for utility models and invention patents, Article 9(1) • Multiple design applications allowed, Article 31(2)

5. Technology Transfer • Stricter appliance of TIER rules in transfer of patent applications and patent rights to foreigners, Article 10(2) • Confidentiality examination for filing abroad introduced, Article 20 • Employee’s invention/service inventions

6. Confidentiality examination • Questions: • “Completed in China” definition? • “National interest” definition? • Decision on need to keep confidential – in particular because of national interest and not because of national security - by SIPO or other agency? • Can third parties rely on lack of confidentiality examination for invalidation? • No remedy for accidental oversight

7. Enforcement • Broader scope of protection for design patents to include offer for sale, Article 11(2) • Damage compensation increased to include reasonable enforcement costs, maximum statutory damage 1 million RMB, Article 65 • Interim injunction strengthened, Article 66 • Court evidence preservation strengthened, Article 67 • Fines for patent passing-off quadrupled, Article 63 • Investigation rights of administrative patent authorities strengthened, Article 64

8. Restricting amendments • Equity principle for unjust enrichment extended to damages paid for invalid patents, Article 47(3) • Compulsory licensing extended to cover insufficient exploitation without justified reason and adverse effects caused to competition, Article 48(2) • Compulsory licensing to implement Doha Declaration of TRIPS for access to medicines, Article 50 • Compulsory licensing for semiconductor technology specified, Article 52 • Prior art defence introduced, Article 62 • International exhaustion introduced, Article 69(1) • Infringement exemptions broadened with explicit Bolar-type exemption, Article 69(5)

9. Protection of Chinese interests • Genetic resources stipulations in Article 5(2), 25, 26(5) • Bolar exemption – no patent term extension or supplementary protection certificate • Compulsory licensing

10. Thank you! Dr. Thomas Pattloch, LL.M.Eur., German Attorney at Law Isartorplatz 8 80331 Munich, Germany T. +49 (0)89 2 10 38 0 F. +49 (0)89 2 10 38 300 Email: t.pattloch@taylorwessing.com