The new Patent Law Implementation Rules (hereinafter referred to as the “New Rules”) was promulgated on December 21, 2023, and is set to be implemented on January 20, 2024. The New Rules introduces a series of significant modifications, which will have an impact on the practice of patent search and analysis. Patent search and analysis professionals, as well as market entities, should pay attention to it when conducting or accepting patent search and analysis work.
Patent search and analysis work is usually divided into two main categories: 1. Evaluating the grant possibility of patent applications or the stability of granted patents, such as patentability search and analysis, patent invalidity search and analysis, etc., collectively referred to as "patent invalidity search and analysis"; 2. Assessing the risk of a particular technical solution infringing on a patent, such as freedom-to-operate (FTO) search and analysis, patent infringement search and analysis, collectively referred to as "patent infringement search and analysis."
I. Determination of Protection Scope of Patent - Announcement System for Amendments to Claims in Invalidation Procedure
According to Article 73 of the New Rules, if the China National Intellectual Property Administration (CNIPA) makes a decision to maintain the validity of a patent or partially declare a patent invalid based on amended claims, it should announce the amended claims (note that due to the lack of claims, design patents are not applicable to the provision).
Thus, it is important to confirm whether the claims of an invention or utility model patent have undergone amendments in invalidation procedures before conducting searches or analysis. If there is, the determination of the protection scope of patent should be based on the amended claims announced by CNIPA, without waiting for the end of administrative litigation procedure (if any) for the invalidation decision. For example, in a patent infringement search and analysis, if it is found that the claims of a patent with high infringement risk has been amended through invalidity procedure, it means that the patentee has deleted or further limited the claims, which will may narrow the protection scope and be favoring the potential infringers.
II. Determination of Patent Term - Patent Term Adjustment （PTA） and Patent Term Extension (PTE) System for Invention Patents
The New Rules introduces a special chapter on "PTA and PTE" in Chapter V (Articles 77 to 84). This chapter provides detailed regulations on PTA and PTE, covering patent term adjustment for unreasonable delays during the authorization process for invention patents, patent term extension for pharmaceutical patents, and their respective calculation methods.
Accordingly, the protection period for invention patents is no longer a simple twenty years from the filing date, and its calculation method is more complex. In the practice of patent infringement search and analysis, especially for pharmaceutical patents, it is necessary to check whether PTA or PTE is involved. According to Articles 106 and 107 of the New Rules, information on PTA or PTE can be queried from the patent register or patent gazette.
III. Expansion of Search Scope of Design Patents - Hague Agreement and Partial Design Patents
Chapter XII (Articles 136 to 144) of the New Rules introduces a special chapter on "Special Provisions for International Applications for Designs," which outlines regulations on international applications for designs filed under Hague Agreement and designating in China.
When conducting searches for design patents, attention should be paid to the existence of international applications for designs that may constitute conflicting applications (i.e., with an earlier international filing date/priority date, and a later publication date). In patent infringement search and analysis, attention should also be paid to the existence of international applications for designs designating in China.
Additionally, Articles 30 and 31 of the New Rules refine the system for partial design patents, indicating an increasing scale of partial design patents. In the practice of invalidity and infringement search and analysis for design patents, particular attention should be paid to the existence of partial design patents.
IV. Keep one eye on to Abnormal Applications - Principle of Good Faith
Articles 11 and 69 of the New Rules establish the principle of good faith as a legal basis for patent authorization and confirmation. Article 3 of the "Regulations on Standardizing Patent Application Behaviors" explicitly defines behaviors violating the principle of good faith, such as obvious substantially identical inventive content in multiple patent applications, simple combinations of different inventions, fabrication, forgery, or alteration of invention content, experimental data, or technical effects, as well as plagiarism, simple substitution, or cobbling together of existing technology, and the use of random generation with computer technology, etc.
In the practice of patent search and analysis, a judgment on whether patentees or applicants have engaged in behaviors violating the principle of good faith should be made. For example, by determining whether the identified prior arts can establish that the target patent or application involves plagiarism, simple substitution, or cobbling together of the prior arts. If there is, in addition to challenging the novelty or inventiveness, violating the principle of good faith can be used as one of the reasons to challenge the target patent through initiating an invalidation procedure, or the target application through submitting a third-party observation.
V. Reference for Patent Stability - Patent Evaluation Report System
Articles 62 and 63 of the New Rules improve the patent evaluation report system, allowing patentees, interested parties, and alleged infringers to request an evaluation report. Furthermore, the New Rules stipulates that patentees can request an evaluation report when registers a patent.
The expanded scope of entities and timing for requesting evaluation reports will lead to more evaluation reports in the processes such as patent transferring or licensing, infringement litigation, administrative law enforcement, and other rights protection actions for utility model and design patents. Therefore, in the practice invalidity and infringement search and analysis for utility model and design patents, it is essential to first check for the existence of an evaluation report, for the evaluation report can be used as a preliminary analysis of the patent's stability to provide a reference for further invalidity searches or infringement analyses.
VI. Alternative Response to High-Risk Patents - Patent Open Licensing System
In the practice of patent infringement search and analysis, if a patent with high infringement risk is identified, potential infringers usually adopt strategies such as challenging the patent's validity, seeking license, designing around, or maintaining the status quo. With the implementation of the New Rules regarding the open licensing system, potential infringers may encounter situations where patents have open licensing declarations.
Article 85 of the New Rules stipulates that open licensing declarations should be accurate, clear, and include information such as the patent number, patentee information, payment methods and standards for patent licensing fees, and the duration of the patent license. Potential infringers can gain insight into the conditions of open licensing declarations in advance, providing more comprehensive information support for evaluating subsequent attempts to seek license, file invalidity request, or take other response measures.
VII. Good Use of Official Patent Information - Ensuring the Authority and Authenticity of Patent Information
Patent information is the foundation of patent search and analysis. The completeness, accuracy, and timeliness of patent information directly impact the quality of patent search and analysis results and legal opinions, thereby influencing whether market entities can make correct business decisions.
As patent search and analysis professionals, reliance on third-party patent databases alone is not sufficient. It is important to make good use of patent information published on the CNIPA's official system to ensure the authority and authenticity of patent information, avoiding issues such as outdated updates or retrieval errors in third-party databases. According to Articles 106 and 107 of the New Rules, information regarding patent invalidation announcements, patent term compensation, open licensing declarations, and other matters will be made available to public by the CNIPA through the patent register and patent gazette. Patent search and analysis professionals can obtain first-hand information by querying the CNIPA's official system.
Conclusion:
The modifications introduced by the New Rules present new challenges to the practice of patent search and analysis. Professionals in this field should be aware of the aforementioned changes and make adaptive adjustments when conducting relevant work in order to provide high-quality patent search and analysis results and legal opinions, and aid market entities make sensible business decisions.
Zhihui Wang
