On 1 June 2021 the fourth amendment of the Patent Law took effect. However, the new Implementation Rules of the Patent Law are still under revision and are unlikely to be published any time soon. On 24 May 2021, to help stakeholders navigate the landscape during the transition period, the China National Intellectual Property Association (CNIPA) promulgated Interim Measures on Disposition of Examination-related Matters in Implementing the Revised Patent Law, which also took effect on 1 June 2021.

According to the interim measures, the following newly amended provisions of the Patent Law will be implemented from 1 June 2021:

  • The CNIPA will apply articles 20(1) and 25(1)(5) in preliminary examinations, substantial examinations and review procedures.
  • The time limit for submitting priority documents under article 30 will apply to patent applications filed after 1 June 2021.
  • Article 66 may be cited as the legal basis to request patent evaluation reports from the CNIPA.

Applications or requests filed on the basis of other provisions – including articles 2(4), 24(1), 29(2), 42(2), 42(3) and 50 – may be accepted but they will not be examined until the new implementation rules take effect. This has raised some concern among practitioners because it may leave patentees in a conundrum. A patentee that postpones its filings until the promulgation of the implementation rules will lose the advantage of filing on an earlier application date. However, without detailed rules to follow, application documents filed prior to the promulgation of the implementation rules may be found to be defective later on if they fail to comply with the finalised implementation rules. This may result in the documents requiring amendment or being rejected, thus disadvantaging the patentee. Some practitioners therefore advocate that, as a compromise, the CNIPA should adopt a less stringent examination criteria for early applications to protect the interests of the rights holders. It remains to be seen how these issues will be addressed in the new implementation rules and examination guidelines.

For further information on this topic please contact Rui Wang at Wanhuida Intellectual Property by telephone (+86 10 6892 1000) or email ([email protected]). The Wanhuida Intellectual Property website can be accessed at www.wanhuida.com.