Yaowen Chen

The new Implementation Rules of the Patent Law (hereinafter referred to as the new Rules) were promulgated on December 21, 2023, and are set to come into effect on January 20, 2024. At the same time, the China National Intellectual Property Administration (CNIPA) has revised the Patent Examination Guidelines (hereinafter referred to as the new Guidelines) based on the new Rules, which will also be implemented from January 20, 2024. Several changes have occurred in the procedures for patent assessment reports, administrative protection of patents, the examination of patent invalidation petitions, and the prosecution system for partial design patents. These changes will impact how enterprises handle patent infringement disputes in the coming years.

As known, enterprises have three kinds of remedies in patent infringement disputes: self-help remedy, administrative remedy, and judicial remedy. In this article, we will elucidate the effects of the changes brought about by the new Rules and Guidelines on these three remedial approaches, providing practical suggestions for enterprises.

I. Changes in Self-help remedy: Accused Infringers Allowed to Apply for Patent Assessment Reports

In the process of Self-help remedy for patent infringement, patentees may exercise their rights against accused infringers through various means such as complaints via an e-commerce platform, C&D letters, etc. When facing infringement accusations, accused infringers, in addition to engaging lawyers for technical feature comparisons to assess infringement risks, also need to evaluate the stability and validity of the patents involved.

Usually, assessing the validity of patents involves hiring professional legal service organizations, a reliable but costly approach. The new Rules have modified and improved the system of patent assessment reports, explicitly stating that accused infringers can apply to CNIPA for a patent assessment report by providing relevant proof of the infringement accusation and paying the required official fees. Simultaneously, the Guidelines have refined and modified the timing of application for assessment reports and the procedures for correcting reports.

Following the implementation of the new Rules, it is recommended that patentees take a proactive approach to apply for patent assessment reports as early as they can before engaging in Self-help remedies to gain a strategic advantage. The Guidelines specify that within two months of receiving the patent assessment report, the requesting party or the patentee may submit requests for correction. By applying for an assessment report before asserting rights, patentees can prevent the accused infringer from submitting unfavorable opinions to the issuing authority, given that the accused infringer has no chance to be the requesting party at that moment. According to the Guidelines, patentees can request a patent assessment report as early as when they apply for patent registration. Additionally, patentees should closely monitor the issuance of assessment reports for the patents used to assert rights, checking for patent fee payment information after filing an infringement complaint or sending out a C&D letter. If it shows someone pays the request fees for the assessment report, it means the accused infringer has applied for the assessment report. According to the Guidelines, assessment reports requested by non-patentees should also be sent to patentees, and patentees can submit correction requests within the specified period. Patentees who pay attention to and notice the issuance of the assessment report may submit correction requests at the earliest time when necessary. Furthermore, patentees should carefully choose patents with high creativity and stability and be cautious in selecting targets for warning to reduce easy challenges to the validity of patents.

For accused infringers, it is advisable to apply for official assessment reports promptly upon receiving infringement accusations. If the report indicates instability in patent rights, it adds significant leverage for negotiations. Accused infringers should also make full use of the opportunity to correct assessment reports and submit opinions to the issuing authority within the specified period if necessary.

While changes to the assessment report system are procedural, the "new procedure law applies" principle suggests that the changes can be applied to patents already granted before the implementation of the Rules. However, it is to be noted that the patent assessment report system only applies to design and utility model patents. Although it includes search results and brief comments, it does not guarantee 100% accuracy in reflecting the validity of patents. For more thorough and accurate analyses, it is still advisable to engage professional lawyers.[i]

II. Changes in Administrative Remedy: New Administrative Law for Administrative Adjudication of Significant Patent Infringement

The CNIPA has long retained the right to handle significant/major patent infringement disputes, as stipulated in the "Administrative Measures for Patent Enforcement" (hereinafter referred to as the Enforcement Measures), where Article 4 states that "for patent infringement cases with significant impact, counterfeiting of others' patents, and cases involving imitating patents, the CNIPA can organize relevant patent administration departments to handle and investigate when necessary." In the revised versions of the Enforcement Measures in 2010 and 2015, this article remained largely unchanged, with no further definition of what constitutes "significant impact." There were no applicable cases in practice before the implementation of the amended Patent Law in 2021. Following the 2020 amendment to the Patent Law, which came into effect in 2021, China, for the first time, clarified in the law that the State Council's patent administration department can handle significant national patent infringement disputes upon the request of patentees or interested parties. Subsequently, the CNIPA issued the "Administrative Adjudication Measures for Significant Patent Infringement Disputes" (hereinafter referred to as the Adjudication Measures), which, at the departmental regulation level, defined the criteria for determining four categories of significant patent infringement cases and specified the procedures for handling such cases.

In the recent revision of the Rules, the fundamental criteria for determining significant patent infringement disputes, as outlined in the Ruling Measures, have been retained[ii]. These criteria have been elevated to the level of administrative law, completing the comprehensive refinement of China's system for handling significant patent infringement disputes. However, the Ruling Measures do not explicitly define the entities included in the term "interested parties" among the applicants. This detail remains unaddressed in the new Rules, requiring practitioners to refer to Article 10 of the Enforcement Measures for a definition[iii]. Additionally, several noteworthy points should be considered when handling such cases:

First, the key to the case being accepted by the CNIPA lies in the opinions of provincial-level intellectual property offices. The initiation of proceedings for adjudication of significant infringement disputes can occur in two ways: (1) Patentees or interested parties can submit a request to the CNIPA, accompanied by materials certifying the significance of the patent infringement dispute, issued by the department responsible for managing patents in the province, autonomous region, or municipality direct under the central government, where the accused party is located or where the infringement occurs. (2) The provincial-level department responsible for managing patents can submit a request to the CNIPA for administrative adjudication on significant patent infringement disputes within its jurisdiction. In both approaches, the opinions of the provincial-level office are crucial to the CNIPA's acceptance of the case.

Second, concessions to court procedures. The precondition for the CNIPA to accept significant patent infringement disputes is that the court has not accepted a case for the same patent infringement dispute. If the court has already accepted a case for the patent infringement dispute, the CNIPA will reject the application for an administrative adjudication. However, even after the CNIPA accepts the case for administrative adjudication on patent infringement, the court can still handle the same infringement case.

Third, high acceptance threshold but a significant injunction effect. Since the issuance of the Ruling Measures two and a half years ago, the CNIPA has heard two batches of a total of 12 cases, involving disputes in the pharmaceutical and communication fields[iv]. Compared to the annual caseload of nearly 60,000 administrative patent dispute cases and almost 40,000 civil patent infringement cases, the number of cases is limited, indicating a high threshold for accepting such cases. However, the small number of cases also suggests that decisions made by the CNIPA are less likely to be easily challenged, leading to a significant injunction effect, and a more efficient resolution of disputes. For example, in the first batch of cases where the German company Boehringer Ingelheim requested an administrative adjudication on two medicine patent infringement cases against Yichang HEC, the CNIPA determined that the accused party constituted infringement and ordered it to withdraw its products from the medicine procurement networks of 24 provinces and cities. Subsequently, medicine procurement departments in multiple regions, including Guangdong and Shanghai, issued notices suspending the procurement qualification of the accused infringing product. In the second batch of cases involving patent infringement disputes in the communication field between Huawei and Xiaomi, from the acceptance of the first case to the comprehensive settlement and withdrawal of the case under the mediation of the CNIPA, it took only eight months, demonstrating the efficiency advantages of administrative resolution in handling significant patent infringement disputes.

From a practical perspective, the two batches of cases concluded by the CNIPA have received positive feedback, effectively resolving disputes quickly and efficiently. With the comprehensive improvement of the rules for administrative adjudications on significant patent infringement disputes after the implementation of the new Rules, enterprises facing significant disputes in important industrial areas may consider attempting to resolve them through administrative procedures.

III. Changes in Judicial Remedy: Impacts of the Revised Time Limits for Invalidity Examination on the Progress of Infringement Lawsuits, and Gradual Clarity in Rules for Determining Infringement of Partial Design Patents

a)      Note on the Impact of Changes in Invalidity Examination Time Limits on the Progress of Infringement Lawsuits

In practice, when patentees initiate infringement lawsuits in people's courts, accused infringers often choose to promptly file for patent invalidity petition to suspend or delay the litigation process. Therefore, changes in the procedure for patent invalidity examination have a significant impact on enterprises' assessment of the progress of patent infringement lawsuits.

After the implementation of the new Rules and the new Guidelines, there have been several changes in invalidity examination that will affect its review period, potentially impacting the progress of patent infringement lawsuits. First, the practice of using ownership disputes to delay invalidity examination procedures may no longer be feasible. Article 103, paragraph 2 of the new Rules adds, " Where the patent administration department under the State Council holds that the reasons for suspension raised by the parties are obviously untenable, it may not suspend the relevant procedures." granting the State Council's patent administrative department the right to refrain from suspending relevant invalidity procedures. This change is expected to significantly reduce instances of maliciously delaying patent infringement lawsuits through the invalidity process. Second, changes have been made to the service time and reply deadline for invalidity examinations. The new Rules have modified the previous practice of presuming that one adds 15 days to the date of dispatch as the service date in both electronic and paper deliveries and then calculating the reply period. Instead, if the delivery is electronic, the date on which the document enters the system recognized by the parties is considered the service date. Simultaneously, the new Guidelines have changed the provisions related to the reply period, replacing the previous specification of "the specified reply period is one month" with "the specified reply period is generally one month." This means that the CNIPA may flexibly set the reply period for invalidity examinations based on the circumstances of the case, no longer fixed at one month. Although specific adjustments are pending for answers from examination practice, it is expected that the review period for simple and well-evidenced cases may be further largely shortened.[v]

After initiating invalidity procedures in patent infringement lawsuits, enterprises need to be aware of the changes in the time limits for invalidity examination, accurately assess the progress of infringement cases, and formulate corresponding case strategies.[vi]

b)      Gradual Clarity occurs in Infringement Determination Rules after the implementation of the Partial Design Patent Examination System

Since the implementation of the revised Patent Law in June 2021, the new Rules further specify the requirements for applying for partial design patents in Articles 30 and 31, and the new Guidelines, implemented simultaneously, also clarify the standards for invalidity examination of partial design patents. It is expected that more and more partial design patents will be granted. Enterprises, in their production and operation processes, whether through prior freedom-to-operate analysis or post-infringement dispute resolution, will need to increasingly focus on partial design patents.

For a long time, the infringement determination method for design patents has adopted the "overall observation, comprehensive judgment" principle, similar to the principle applied during the prosecution stage. Although there is no judicial interpretation specifically addressing the infringement determination of partial design patents, several points of note regarding invalidity examination standards for partial design patents which help understand the infringement rules can be gleaned from the new examination guidelines.

First, the protection scope of partial design patents. The new Guidelines explicitly state that the protection scope of partial design patents should consider "the position and proportion relationship of the part in the shown product" in addition to the shape, pattern, and color of the part.

Second, the criteria for determining the same or similar types of products for partial design patents. The new Guidelines specify that, for partial design patents, products of the same type refer to products with the same usage as the part and as the whole product. To determine whether products are of a similar type, one should comprehensively consider the usage of the product and the usage of the part.

Third, the criteria for determining substantial identity for partial design patents. The new Guidelines add provisions that if the only difference lies in routine changes related to the position and/or proportion relationship of the protected part in the whole product, it is considered substantially identical. Other criteria for determining substantial identity remain largely unchanged.

Fourth, retention of the "overall observation, comprehensive judgment" comparison principle. The new Guidelines retain the comparison principle of "overall observation, comprehensive judgment" and do not provide specific regulations for partial design patents. However, it is anticipated that controversies may arise in practice over what constitutes the "overall" in partial design patents and whether the "average consumer" needs additional consideration of their common knowledge about partial designs. These issues await further clarification through administrative or judicial practice.

While these changes pertain to the prosecution standards, they will serve as important references for determining infringement in partial design patents until new judicial interpretations on infringement are issued.

IV Conclusion

After the implementation of the new Rules and Examination Guidelines, it is recommended that enterprises stay informed about these changes and utilize them to the fullest extent. Additionally, for issues not yet addressed in the Rules and Guidelines, we will closely monitor the latest practices of administrative and judicial institutions. Please stay tuned for further updates.

[i] For more changes to the Patent Assessment System, please refer to the fourth article of NTD’s series on the interpretation of the rules of Implementation of the Patent Law

[ii] Article 96 of Rules for the Implementation of the Patent Law of the People's Republic of China (2023):

Under any of the following circumstances, the patent infringement dispute referred to in Article 70 of the Patent Law has a significant impact on the whole nation:

(1) relating to major public interests;

(2) having a significant impact on the development of the industries;

(3) significant cases across provinces, autonomous regions and municipalities directly under the central government;

(4) other circumstances which the patent administration department under the State Council considers may have a significant impact.

[iii] Article 10 of the Patent Administrative Enforcement Measures:

The term "interested parties" in the first item refers to the licensee of the patent license contract and the legal successor of the patentee. Among the licensees of the patent license contract, the licensee who exclusively implements the license contract can independently file a request. In the case where the patentee does not file request, the licensee implementing the sole license contract can file a request independently. Unless otherwise agreed in the contract, the licensee of a general license contract cannot file request independently.

[iv] In November 2021, Boehringer Ingelheim of Germany requested an adjudication that Yichang HEC infringed 2 pharmaceutical patents. In January 2023, Huawei requested an adjudication that Xiaomi infringed 4 patents and in July 2023, Xiaomi requested an adjudication that Huawei infringed 6 patents, which included several SEP patents in the field of communications

[v] More discussion regarding patent dispute administrative protection, please refer to the first article of NTD’s series on the interpretation of the rules of Implementation of the Patent Law

[vi] For other changes in the patent invalidation procedure, please refer to the eighth article of NTD’s series on the interpretation of the rules of Implementation of the Patent Law

Owen (Yaowen) CHEN

Mr. Chen worked for a well-known domestic telecommunications company as an engineer and one of most prestigious red-circle law firm as a lawyer. Now in NTD, his main practice areas are litigation and arbitration in the fields of patents, trademarks, unfair competition anti-trust, and trade secrets.


Mr. Chen has provided service for many world-leading companies such as Nippon Steel Corporation, Japan Display, Panasonic of Japan, and Bayer AG of Germany in litigation and arbitration over patents, trademarks, unfair competition, and license disputes in China. Also, he has rich experience in IP transaction and IP DD.

With an engineering background in information technology, Mr. Chen has comprehensive and all-round experience in various fields of intellectual property protection, especially in handling patent and other technical cases in the fields of photoelectric sensing, image processing, telecommunication, IoT, AI, vehicle design and manufacturing, and advanced materials manufacturing.