The Third Amendment to China’s Patent Law takes effect today, October 1, 2009. From the inception of China patent law twenty-five years ago in 1984, the system has undergone two previous revisions. In late December 2008, after several years of debate and three proposed drafts, the final draft of the Third Amendment was accepted. Now, nine months after passage, the new rules have become the law.
The net effect of the revision is to bring China’s patent rules into greater conformity with worldwide standards of patent law. In comparison to earlier drafts of the Third Amendment, the final version reflects a better balance between the needs of foreign and domestic companies. For the government, one of the main purposes of the Amendment was to strengthen intellectual property protection.
During the twenty-five years of patent law, China has moved from a manufacturing economy, which often copied the advances of more advanced societies, to an economy that promoted innovation and was itself making the advances. So, it’s not surprising that fortifying intellectual property law has become a priority in China.
Under the Third Amendment, the rules for what constitutes novelty have been changed so that the novelty must be international, rather than only in China. This makes it more difficult for domestic companies to file “junk” patents that have interfered with the ability of foreign companies to operate in China.
Another change is the rules requiring a foreign company to first file a patent in China for a discovery made in China. Although it is required to file first in China, a patent seeker is allowed to file for a "secrecy check" and then file first in a foreign country, without jeopardizing an eventual patent in China. Unlike previous iterations of the law, the procedure is clearly defined and straightforward.
Also, fines were increased to promote adherence to all the provisions of the law. Previously, it could sometimes make business sense to break patent law because the rewards were greater than the enforcement penalty.
We covered all the changes in a series of three articles written for us by Charles C. Liu, PhD, JD, Partner, Director of US and Canada Practices, Unitalen Attorneys at Law and Jeanne J. Liu. Unitalen is the largest private IP law firm in China. The title of the series was “Waves of Changes in Chinese Patent Law and Regulations.”
The following are links to each of the three articles and the subjects covered in each one.
Part I: “Novelty and Inventiveness,” “Secrecy Check and Foreign Filing License,” and “Crossover of Invention and Utility Model.”
Part II: “Design Patents,” “Limited Exceptions from Infringement,” “Damages and Injunctive Relief,” and “Patent Counterfeiting.”
Part III: “Patent Misuse and Unfaithful Proceeding,” “Compulsory Licenses,” “Disclosure of Genetic Resources,” “Patent Licensing and Joint Ownership,” “Empowerment of Patent Administration,” and “Designation of Patent Firms to Handle Foreign-Related Matters.”