SIPO of China Promulgates Transitional Measures for Implementation of the Revised Patent Law and Notice on Issues Relating to the Implementation of the Revised Patent Law

 
To ensure the smooth implementation of the revised Chinese Patent Law, the State Intellectual Property Office (SIPO) of China has promulgated on September 29, 2009 the Transitional Measures for Implementation of the Revised Patent Law and Notice on Issues Relating to the Implementation of the Revised Patent Law, thus clarifying the scopes of application for the revised Patent Law. Hereinbelow are the highlights of the two documents.  
 
I.           Major provisions of the Transitional Measures for Implementation of the Revised Patent Law comprise:
 
1. The provisions of the unrevised Patent Law shall apply to the patent applications having the date of filing before October 1, 2009 (not including that date, the same hereinafter) as well as the patents granted on the basis of said applications, and the provisions of the revised Patent Law shall apply to the patent applications having the date of filing after October 1, 2009 (including that date, the same hereinafter) as well as the patents granted on the basis of said applications, with the exception of those specifically stipulated in point 2 of this section.
 
The meaning of the date of filing referred to in the preceding paragraph shall be understood in accordance with the relevant provisions of the Implementing Regulations of the Patent Law.
 
2.   With respect to the prosecution of the following affairs in relation to the patent applications having a filing date before October 1, 2009 as well as the patents granted on the basis of said applications, the provisions of the revised Patent Law shall apply:
(1)     where a compulsory license for exploitation of a patent is requested after October 1, 2009;
(2)     where the administrative authorities for patent affairs handle any alleged patent infringement act or any alleged patent passing off act occurring after October 1, 2009;
(3)     where any patentee affixes its patent identification after October 1, 2009;
(4)     where any foreigner, foreign enterprise or other foreign organization having no habitual residence or business office in China appoints or changes a patent agency after October 1, 2009.
 
II.         Major provisions of the Notice on Issues Relating to the Implementation of the Revised Patent Law comprise:
 
In filing a patent application or prosecuting other patent affairs after October 1, 2009 (including that date):
 
1.    Where an applicant files on the same day patent applications for both a utility model and an invention in respect of the same invention-creation, the Statement for Filing on the Same Day Both Utility Model and Invention Patent Applications shall be filled out respectively at the time of application, stating that another application has been filed for the same invention-creation.
 
2.   Any entity or individual intending to file a patent application abroad for an invention or a utility model completed in China shall file a request in advance to the State Intellectual Property Office for secrecy examination, and fill out the Request for Secrecy Examination (Foreign Filing License).
 
3. In filing a patent application for an invention-creation completed depending on genetic resources, an applicant shall fill out the Registration Form for Disclosure of the Source of Genetic Resources, stating the direct source and original source of the genetic resources; where the applicant is unable to indicate the original source, a reason shall be provided.
 
4.  An applicant in applying for a design patent shall file a brief description of the design; an application without filing a brief description of the design shall not be accepted. The brief description of the design shall indicate the name, the use and the main points of the design, as well as designate a drawing or photo best showing the main points of the design.
 
5.  The State Intellectual Property Office only makes patent evaluation reports for utility models and designs having a filing date (or the priority date where there is a priority) after October 1, 2009 (including that date); for utility models having a filing date (or the priority date where there is a priority) before October 1, 2009, only patent search reports on the utility models will be made.