On 25 August 2000, China finalized the second revision on its patent law. The revised Patent Law will enter into force on 1 July, 2001. Following is the overview of the revised law.

The PRB decisions are no longer final

According to the current Patent Law, the decisions made by the Patent Reexamination Board (PRB) on requests for reexamination or invalidation of patents for utility model and design are final, which is not in conformity with the TRIPS Agreement.

For the above reason, the revised Patent Law provides that if an interested party involved in a request for reexamination or invalidation of patent is not satisfied with the decision made by PRB, he or it may institute legal proceedings against the PRB decision in the people's court.

Remedies for imminent infringements

Offer for sale: in the revised law, unauthorized "offer for sale" is added to the acts of patent infringement, apart from the unauthorized manufacture, use, sale or import of patented products or products directly obtained by patented process.

Injunctions and property preservation: temporary measures are provided for in the revised law, according to which anyone facing imminent infringement on his right may request the court to issue injunctions and provide property preservation before legal proceedings.

Prior copyright and trademark right overrides the patent for design

Conflict between design patent, copyright and trademark right is not something rare under the current Patent Law. To void this, such provision is provided in the revised law that any design for which patent may be granted must not collide with any prior legal rights obtained by any other person.

Procedural changes

• The revocation procedure is removed.

• Search reports or documents concerning results of examinations made in foreign countries are not the prerequisite for patent examination as to substance.

• Search reports or documents concerning results of examinations made in foreign countries are not the prerequisite for patent examination as to substance.

• Approval from the State Council is no longer required for the Chinese nationals applying for foreign patents.

• In handling disputes over infringement on patents for utility model, the court or competent administrative organ for patent affairs may ask the patentee to present search reports made by the patent administrative departments under the State Council.

• A provision is added to the revised law to legalize the application of international patent treaties China has acceded to.

Compensation for damages specified

Under the current Patent Law, the amount of damages caused by patent infringement is calculated according to the losses suffered by the patentee or the profits made by the infringer from the infringement. In the revised law a sentence is added following the above sentence, which reads "If it is too difficult to determine the damages based on such losses of the patentee or the profits of the infringer, the appropriate times of the licensing royalties for the said patent may be applied mutatis mutandis".

Severer administrative sanctions against passing off

Under the current Patent Law, passing off another person's patent, if the act is not serious, is subject to the administrative procedure as applied to patent infringements. According to the revised law, passing off the patents of others will face severer administrative sanctions, including confiscation of illegal income, a fine of no more than 3 times of the illegal income, or a fine of no more than RMB 50,000 yuan if there is no illegal income.

Mediation by the patent administrative organs

The revised Patent Law gives a new role to the patent administrative organs. In resolving a patent dispute, the patent administrative organ may mediate on the damages upon a request from the interested party.

Prescription for court actions

Under the revised law, prescription for instituting legal proceedings concerning infringement on patent right is 2 years, counted from the date on which the patentee or any interested party obtains or should have obtained knowledge of the infringing act. However, as an exception, where the patentee has already obtained or should have obtained the knowledge of the exploitation of his invention before the date of granting the patent right, the prescription shall be counted from the date of grant.