The Bill of The Amendment to the Patent Law of the People’s Republic of China
With the Current Provisions for Comparison
中国专利法修正案英译稿——与旧法条对照阅读
Dong Hao
The Bill of The Amendment to the Patent Law of China has been published for comments and suggestions by the National People’s Congress more than two months ago. I have reported this in a Chinese post and compared the amended provisions with the present ones. Actually I have translated the pending provisions roughly as follows. Hope this can be the first try in academia. Mistakes or defects are for sure existing, and your advices will be of course appreciated.
—————————————————
If you don’t believe a simple link to this page is enough for transmiting the information, you may copy this post to your uncommercial site together with the URL address of this page. However, you have to double check whether the strikethroughs (like this ) are still exist after your copying and pasting, or the readers will be totally confused.
—————————————————
1. Amending Article 1
Current article:
Article 1:
This law is formulated for the purpose of protecting patent rights for inventions and creations, encouraging inventions and creations, fostering the spreading and application of inventions and creations, promoting the scientific and technological progress and innovations, and adapting to the needs of the construction of socialist modernization.
This law is formulated for the purpose of protecting patent rights for inventions and creations, encouraging inventions and creations, fostering the spreading and application of inventions and creations, promoting the scientific and technological progress and innovations, and adapting to the needs of the construction of socialist modernization.
After amendment:
Article 1:
This law is formulated for the purpose of protecting patent rights for inventions and creations, encouraging inventions and creations, fostering the spreading management and application of inventions and creations, promoting the ability of independent innovation, the progress of scientific and technological, and the development of economy and society, as well as forming a innovative country. progress and innovations, and adapting to the needs of the construction of socialist modernization.
This law is formulated for the purpose of protecting patent rights
2. Adding a paragraph in Art. 5 as the second paragraph
Currently:
Article 5 No patent right shall be granted for any invention-creation that is contrary to the laws of the State or social morality or that is detrimental to public interest.
Adding:
"For the inventions based on genetic resources, if the access or utilization of the genetic resources are violating the law and administrative regulations, the invention will not be granted patent right."
3. Amending Art. 9
Current article:
Article 9 Where two or more applicants file applications for patent for the identical invention-creation, the patent right shall be granted to the applicant whose application was filed first.
After amendment:
Article 9
One one patent right shall be granted to one piece of invention-creation. However, if:
(1) the same applicant applied for both patent right for utility model and patent right for invention on the same day;
(1) the same applicant applied for both patent right for utility model and patent right for invention on the same day;
(2) the patent right for utility model of this application has been granted and not ceased; and
(3) the applicant claimed to waive the patent right for utility model
The original application for the patent right for invention can be admitted.
Where two or more applicants file applications for patent for the identical invention-creation, the patent right shall be granted to the applicant whose application was filed first.
4. Amending the second paragraph of Art. 10
Current paragraph:
Any assignment, by a Chinese entity or individual, of the right to apply for a patent, or of the patent right, to a foreigner must be approved by the competent department concerned of the State Council.
After amendment:
Any assignment, by a Chinese entity or individual, of the right to apply for a patent, or of the patent right, to a foreigner must fulfill the legal procedure stipulated by the law and administrative regulations.
5. Amending the second paragraph of Article 11:
Current paragraph:
After the grant of the patent right for a design, no entity or individual is entitled to, without permission of the patentee, exploit the patent, that is, to make, sell or import the product incorporating its or his patented design, for production or business purposes.
After amendment:
After the grant of the patent right for a design, no entity or individual is entitled to, without permission of the patentee, exploit the patent, that is, to make, sell, offering for saleor import the product incorporating its or his patented design, for production or business purposes.
6. Amending Art. 14
Current article:
Article 14
Where any patent for invention owned by a state-owned enterprise or public institution is of great significance to the interests of the state or to the public interests, the relevant competent department of the State Council and the people’s government of the province, autonomous region, or municipality directly under the Central Government may, upon approval of the State Council, decide to spread and apply the patent within the approved scope, allow designated entities to exploit the patent; and the exploiting entity shall, in accordance with the legal provisions of the state, pay royalties to the patentee.
Any patent for invention owned by a Chinese individual or entity under collective ownership, which is of great significance to the interests of the state or to the public interests and is in need of spreading and application, may be treated alike with reference to the provisions of the preceding paragraph.
After amendment:
Article 14
Where any patent for invention owned by a state-owned enterprise or public institution, if it is affirmed of great significance to the interests of the state or to the public interests by the competent department concerned of the State Council or the people’s government of the provinces, autonomous regions or municipality directly under the central government, the State Council and the people’s government of the province, autonomous region, or municipality directly under the Central Government may, upon approval of the State Council, decide to spread and apply the patent within the approved reasonable scope, allow designated entities to exploit the patent; and the exploiting entity shall, in accordance with the legal provisions of the state, pay royalties to the patentee; the amount of the royalties should be based on the negotiation between the patent right owner and the exploiting entity.
Any patent for invention owned by a Chinese individual or entity under collective ownership, which is of great significance to the interests of the state or to the public interests and is in need of spreading and application, may be treated alike with reference to the provisions of the preceding paragraph.
7. Adding an article as Article 15:
If a right of applying patent or a patent right is jointly owned by two entities or individuals, the exercise of the right shall based by the agreement among joint owners. If the joint owners do not have an agreement, any one of the owners can exploit the patent, or issue a non-exclusive license; the royalties from the non-exclusive license shall be distributed among the joint owners.
Except the situation mention in the previous paragraph, any exercise of the right of applying patent or the patent right shall be based on the consensus of all joint owner.
8. Amending first paragraph of Art. 19 (Art. 19 will be the Art. 20 after the amendment):
Current paragraph:
Where any foreigner, foreign enterprise or other foreign organization that has no habitual residence or business office in China applies for a patent, or has other patent matters to attend to, in China, he or it shall appoint a patent agency designated by the patent administrative department of the State Council to act as his or its agent.
After the amendment:
Where any foreigner, foreign enterprise or other foreign organization that has no habitual residence or business office in China applies for a patent, or has other patent matters to attend to, in China, he or it shall appoint a legally established patent agency designated by the patent administrative department of the State Council to act as his or its agent.
9. Amending first paragraph of Art. 20 (Art. 20 will be the Art. 21 after the amendment):
Current paragraph:
Where any Chinese entity or individual intends to file an application in a foreign country for a patent for invention or creation made in China, it or he shall file first an application for patent to the patent administrative department of the State Council, appoint a patent agency designated by the said patent administrative department, and abide by Article 4 of this Law.
After amendment:
10. Adding a paragraph as the second paragraph of Art. 21 (it will be the Art. 22 after the amendment):
It is the duty of the patent administrative department of the State Council to spread the patent information integrated and accurately, and to publish the Patent Gazette regularly.
11.1. Amending the second paragraph of Art. 22 (Art. 22 will be the Art. 23 after the amendment):
Current paragraph:
Novelty means that, before the date of filing, no identical invention or utility model has been publicly disclosed in publications in the country or abroad or has been publicly used or made known to the public by any other means in the country, nor has any other person filed previously with the patent administrative department of the State Council an application which described the identical invention or utility model and was published after the said date of filing.
After amendment:
Novelty means that, the invention or utility model dose not existing in the current technologies; and before the date of filing, no identical invention or utility model has been publicly disclosed in publications in the country or abroad or has been publicly used or made known to the public by any other means in the country, nor has any other person filed previously with the patent administrative department of the State Council an application which described the identical invention or utility model and was published after the said date of filing.
11.2. Amending the third paragraph of Art. 22 (Art. 22 will be the Art. 23 after the amendment):
Current paragraph:
Inventiveness means that, as compared with the technology existing before the date of filing the invention has prominent substantive features and represents a notable progress and that the utility model has substantive features and represents progress.
After amendment:
Inventiveness means that, as compared with the current technologies, the technology existing before the date of filing the invention has prominent substantive features and represents a notable progress, or the utility model has substantive features and represents progress.
11.3. Adding a paragraph as the fifth paragraph of Art. 22 (Art. 22 will be the Art. 23 after the amendment):
In this law, the term current technologies means the technologies that has been publicly known in or out of China before date of application.
12. Amending Art. 23 (Art. 23 will be Art. 24 after the amendment)
Current Article:
Article 23
Any design for which a patent right is granted shall not be identical with or similar to any design which, before the date of filing, has been publicly disclosed in publications in our country or abroad or has been publicly used in our country, nor shall it be in conflict with the prior lawful right of anyone else.
Any design for which a patent right is granted shall not be identical with or similar to any design which, before the date of filing, has been publicly disclosed in publications in our country or abroad or has been publicly used in our country, nor shall it be in conflict with the prior lawful right of anyone else.
After amendment:
Article 24
Any design for which a patent right is granted shall not belongs to the current design, and before the date of filing, no identical design shall be filed with the patent administrative department of the State Council and application and was published after the said date of filing.
The design that is granted a patent shall be distinct to the current design or the assemble of the current design prominently.
The design that is granted a patent shall not be conflict to other legally obtained right that owned by another entity or individual and obtained before the date of granting the patent.
In this law, the term current design means any design known publicly before the date of application.
13. Amending the first paragraph of Art. 25 (it will be Art. 26 after the amendment) by adding a subparagraph as subparagraph (6).
Current Article:
Article 25
For any of the following, no patent right shall be granted:
(1) scientific discoveries;
(2) rules and methods for mental activities;
(3) methods for the diagnosis or for the treatment of diseases;
(4) animal and plant varieties;
(5) substances obtained by means of nuclear transformation.
For processes used in producing products referred to in items (4) of the preceding paragraph, patent right may be granted in accordance with the provisions of this Law.
For any of the following, no patent right shall be granted:
(1) scientific discoveries;
(2) rules and methods for mental activities;
(3) methods for the diagnosis or for the treatment of diseases;
(4) animal and plant varieties;
(5) substances obtained by means of nuclear transformation.
For processes used in producing products referred to in items (4) of the preceding paragraph, patent right may be granted in accordance with the provisions of this Law.
After amendment:
Article 26
For any of the following, no patent right shall be granted:
(1) scientific discoveries;
(2) rules and methods for mental activities;
(3) methods for the diagnosis or for the treatment of diseases;
(4) animal and plant varieties;
(5) substances obtained by means of nuclear transformation; and
For any of the following, no patent right shall be granted:
(1) scientific discoveries;
(2) rules and methods for mental activities;
(3) methods for the diagnosis or for the treatment of diseases;
(4) animal and plant varieties;
(5) substances obtained by means of nuclear transformation; and
(6) the design, which is mainly used for identification, of patten, color or the combination of them on printed flat works.
For processes used in producing products referred to in items (4) of the preceding paragraph, patent right may be granted in accordance with the provisions of this Law.
For processes used in producing products referred to in items (4) of the preceding paragraph, patent right may be granted in accordance with the provisions of this Law.
14. Adding a paragraph as the sixth paragraph of Art. 26 (current Art. 26 will be Art. 27 after the amendment).
For the inventions based on genetic resources, applicant shall declare the direct source of the genetic resources and the original source of the genetic resources in the application documents; if the applicant is not able to declare the original source, the reason of the disability shall be stated.
15. Amending the second paragraph of Art. 31 (current Art. 31 will be Art. 32 after the amendment)
Current paragraph:
An application for a patent for design shall be limited to one design incorporated in one product. Two or more designs which are incorporated in products belonging to the same class and are sold or used in sets may be filed as one application.
After amendment:
An application for a patent for design shall be limited to one design incorporated in one product. Two or more designs which are incorporated in the same product, or two or more designs which are used in products belonging to the same class and are sold or used in sets may be filed as one application.
16. Amending Art. 48 (current Art. 48 will be Art. 49 after the amendment)
Current article:
Article 48
Where any entity which is qualified to exploit the invention or utility model has made requests for authorization from the patentee of an invention or utility model to exploit its or his patent on reasonable terms and such efforts have not been successful within a reasonable period of time, the patent administrative department of the State Council may, upon the application of that entity, grant a compulsory license to exploit the patent for invention or utility model.
Where any entity which is qualified to exploit the invention or utility model has made requests for authorization from the patentee of an invention or utility model to exploit its or his patent on reasonable terms and such efforts have not been successful within a reasonable period of time, the patent administrative department of the State Council may, upon the application of that entity, grant a compulsory license to exploit the patent for invention or utility model.
After amendment:
Under the following situation, the patent administrative department of the State Council may, according to the application of entities or individuals which is qualified toexploit the invention or utility model, grant a compulsory license:
(1) after 3 years since the date of granting the patent, and after 4 years since the date of application, the patentee has not exploit the patent, or has not exploit the patent adequately; or
(2) the patentee’s conduct of exploiting the patent is affirmed a conduct of excluding or restricting competition through a judicial or an administrative procedure, hence it is necessary to grant a compulsory license to the applicant.
17. Adding an article as Art. 51:
For purpose of public health, the patent administrative department of the State Council may grant a compulsory license of the manufacturing and export medicines with Chinese patent to the following countries or regions:
(1) a country which is listed among the least development countries;
(2) a country which do not has the capability of manufacturing the patented medicine, with the precondition that the country has proceed relevant formalities in according to the World Trade organization’s treaties that China had joined in.
18. Adding an article as Art. 53:
If a patent is related to the semiconductor technology, then the compulsory license of it is shall be restricted to the following situation:
(1) for the purpose of public uncommercial use;
(2) the patentee’s conduct of exploiting the patent is affirmed a conduct of excluding or restricting competition through a judicial or an administrative procedure, hence it is necessary to grant a compulsory license to the applicant.
19. Adding an article as Art. 54:
Except the situation where Article 49, section (2) and Article 51 of this law has mentioned, a compulsory license shall only aims to provide the relevant product to the domestic market.
20. Amending Art. 51 (the current Art. 51 will be Art. 55 after the amendment):
Current Article:
Article 51
The entity or individual requesting, in accordance with the provisions of this Law, a compulsory license for exploitation shall furnish proof that it or he has not been able to conclude with the patentee a license contract for exploitation on reasonable terms.
The entity or individual requesting, in accordance with the provisions of this Law, a compulsory license for exploitation shall furnish proof that it or he has not been able to conclude with the patentee a license contract for exploitation on reasonable terms.
After amended:
The entity and individual who exploit the compulsory license according to Article 49, section (2) and Article 51 of this law shall provide evidence to prove that it or he had requested the patentee issuing a license but not acquired it in a reasonable time.
21. Amending the second paragraph of Art. 57 as a single Art. 62 :
Current paragraph:
Where any dispute over infringement of a patent right is involved in a patent for invention for the manufacturing process of a new product, any entity or individual manufacturing the identical product shall provide proof on the difference of its own process used in the manufacture of its product from the patented process. While if any dispute over infringement of a patent right is involved in a patent for utility model, the people’s court or the patent administrative department may require the patentee to issue the retrieval report rendered by the patent administrative department of the State Council.
After amendment:
Where any dispute over infringement of a patent right is involved in a patent for utility model or design, the people’s court or the department that managing the patent may request the patentee or any interested party provide an evaluation report issued by the patent administrative department of State Council.
According to the application of patentee or any interested party, the patent administrative department of State Council issues an evaluation report on the relevant utility model patent or design patent by searching, analsis and evaluation. This evaluation report is the rudimentary evidence when the people’s court or the department that managing the patent is about to judge the validity of the patent.
22. Adding an article as Art. 63:
In the dispute over infringement of a patent right, if the party accused infringing the patent right can provide evidence to prove that the technology it used or the design it employed belongs to current technology or current design, then the conduct of the accused party shall not constitute an infringement.
23. Amending Art. 58 (Art. 58 will be Art. 64 after the amendment):
Current Article:
Article 58
Whoever counterfeits the patent of others shall, in addition to bearing civil liabilities in accordance with the law, be ordered by the patent administrative department to make a correction and be announced thereby, its/his illegal proceeds, if any, shall be confiscated, and it/he may be fined up to three times the illegal proceeds. If there are no illegal proceeds, it/he may be fined up to 50000 Yuan. If any crime is constituted, it/he shall be subject to criminal liabilities in accordance with the law.
After amendment:
Article 64
Whoever counterfeits the patent of others shall, in addition to bearing civil liabilities in accordance with the law, be ordered by the patent administrative department to make a correction and be announced thereby, its/his illegal proceeds, if any, shall be confiscated, and it/he may be fined up to fourthree times the illegal proceeds. If there are no illegal proceeds, it/he may be fined up to 50,000 200,000 Yuan. If any crime is constituted, it/he shall be subject to criminal liabilities in accordance with the law.
Whoever counterfeits the patent of others shall, in addition to bearing civil liabilities in accordance with the law, be ordered by the patent administrative department to make a correction and be announced thereby, its/his illegal proceeds, if any, shall be confiscated, and it/he may be fined up to four
24. Amending Art. 59 (Art. 65 will be Art. 64 after the amendment):
Current article:
Article 59
Whoever passes off any unpatented product as a patented one or passes off any unpatented process as a patented one shall be ordered by the patent administrative department to make a correction and be announced thereby, and may be fined up to 50000 Yuan.
Whoever passes off any unpatented product as a patented one or passes off any unpatented process as a patented one shall be ordered by the patent administrative department to make a correction and be announced thereby, and may be fined up to 50000 Yuan.
After amendment:
Article 65
Whoever passes off any unpatented product as a patented one or passes off any unpatented process as a patented one shall be ordered by the patent administrative department to make a correction and be announced thereby, and may be fined up to 50000 200,000 Yuan. And the illegal proceeds shall be confiscated.
Whoever passes off any unpatented product as a patented one or passes off any unpatented process as a patented one shall be ordered by the patent administrative department to make a correction and be announced thereby, and may be fined up to
25. Amending Art. 60 (Art. 60 will be Art. 66 after the amendment):
Current article:
Article 60
The amount of compensation for infringement upon a patent right shall be determined on the basis of the losses suffered by the right-holder due to infringement or the proceeds gained by the infringer from infringement. If the losses of the aggrieved party or the proceeds gained by the infringer are difficult to determine, they may be determined in a reasonable way with reference to the multiple of the royalties for this patent.
The amount of compensation for infringement upon a patent right shall be determined on the basis of the losses suffered by the right-holder due to infringement or the proceeds gained by the infringer from infringement. If the losses of the aggrieved party or the proceeds gained by the infringer are difficult to determine, they may be determined in a reasonable way with reference to the multiple of the royalties for this patent.
After amendment:
Article 66
The amount of compensation for infringement upon a patent right shall be determined on the basis of the negotiation between parties. If the parties can not come to an agreement, the amount shall be determined on the basis of losses suffered by the right-holder due to infringement or the proceeds gained by the infringer from infringement; if the losses of the aggrieved party or the proceeds gained by the infringer are difficult to determine, they may be determined in a reasonable way with reference to the multiple of the royalties for this patent. If the losses of the aggrieved party, the proceeds gained by the infringer and the royalties for this patent are all difficult to determine, the peoples court may, based on the type of the infringed patent, the nature and the circumstance of the infringement, and other factor, to determine a compensation ranged from 10,000 yuan to 1,000,000 yuan.
The amount of compensation for infringement upon a patent right shall be determined on the basis of the negotiation between parties. If the parties can not come to an agreement, the amount shall be determined on the basis of losses suffered by the right-holder due to infringement or the proceeds gained by the infringer from infringement; if the losses of the aggrieved party or the proceeds gained by the infringer are difficult to determine, they may be determined in a reasonable way with reference to the multiple of the royalties for this patent. If the losses of the aggrieved party, the proceeds gained by the infringer and the royalties for this patent are all difficult to determine, the peoples court may, based on the type of the infringed patent, the nature and the circumstance of the infringement, and other factor, to determine a compensation ranged from 10,000 yuan to 1,000,000 yuan.
26. Amending Art. 61 (Art. 61 will be Art. 67 after the amendment):
Current article:
Article 61
Where a patentee or interested party has evidence to prove that someone else is committing or is going to commit an act of infringing upon the patent right, and its lawful rights and interests will suffer from damage which is difficult to make up if it does not stop this act in time, it may, before bringing a lawsuit, apply to the people’s court for ordering the infringer to stop the relevant act or adopting the property preservation measure.
The people’s court shall, when handling an application mentioned in the preceding paragraph, be governed by the provisions in Articles 93 through 96, and Article 99, of the Civil Litigation Law of the People’s Republic of China.
After amendment:
Article 67
Where a patentee or interested party has evidence to prove that someone else is committing or is going to commit an act of infringing upon the patent right, and its lawful rights and interests will suffer from damage which is difficult to make up if it does not stop this act in time, it may, before bringing a lawsuit or during the procedure of the lawsuit, apply to the people’s court for ordering the infringer to stop the relevant act. or adopting the property preservation measure.
The people’s court shall, when handling an application mentioned in the preceding paragraph, be governed by the provisions in Articles 93 through 96, and Article 99 relating to the property preservation measures in the Civil Litigation Law of the People’s Republic of China.
27. Adding an article as Art. 68:
To stop an infringement upon a patent right, the patentee or any interested party may apply the people’s court for an order of securing evidence when the evidence is possible to be destroyed and can hardly to obtain again.
The people’s court shall make the decision within 48 hours after it received the application. If the decision is to issue an order of securing evidence, the order shall be executed immediately.
If an order of securing evidence is issued, the people’s court may order the applicant provide a guarantee. If the applicant failed to provide the guarantee, the application shall be rejected.
If the applicant fails to initiate the lawsuit within 15 days after the people’s court has adopted the measures of securing evidence, the people’s court shall terminate the measures of securing evidence.
28. Amend the first paragraph of Art. 63 as a single article of Art. 70, and amend the (1) sub-paragraph as follows:
Current sub-paragraph:
Article 63
…
(1) Anyone uses, promises the sale of or sells a patented product or a product directly obtained from the patented process, which was manufactured or imported by the patentee, or was manufactured or imported with the permission of the patentee and has been sold out;
After amendment:
Article 70
(1) Anyone uses, promises the sale, sells or imports a patented product or a product directly obtained from the patented process, which was manufactured or imported by the patentee, or was manufactured or imported with the permission of the patentee and has been sold out;
29. Amend the second paragraph of Art. 63 as a single article of Art. 70, and amend the sub-paragraph (1) as follows:
Current paragraph:
Article 63
…
Whoever uses or sells a patented product without knowing that the product was manufactured and sold without permission of the patentee or a product directly obtained from a patented process for the purpose of production and business operation need not bear liabilities for compensation provided that it/he can prove that the product is obtained through legal avenues.
After amendment:
Article 71
Whoever uses or sells a patented product without knowing that the product was manufactured and sold without permission of the patentee or a product directly obtained from a patented process for the purpose of production and business operation need not bear liabilities for compensation provided that it/he can prove that the product is obtained through legal avenues.
Besides the above amendments, the expressions in some provisions are improved, and the numbers of the articles are also adjust accordingly.
