On June 27, 2011, the State Intellectual Property Office issued the Measures for Filing of Patent License Contracts (the “Measures”), which came into effect on August 1, 2011. In order to carry out the provisions of the Patent Law of the People's Republic of China, the Measures prescribes procedures and documents required for recordation of patent license contracts. The Measures provide that parties to a patent license contract must undergo recordation procedures for filing within three months after the contract has entered into effect.
According to the Measures, a patent licensor shall be the lawful patent owner or other right-holder, such as an exclusive patent licensor. If a patent licensing contract is concluded on the basis of jointly-owned patent rights, unless there is a separate agreement among all the co-owners or otherwise provided for in the Patent Law, the consent of other co-owners is required. In addition, to be eligible for filing, a patent licensing contract must be concluded in written form.
Among other items, the Measures lists the following documents that shall be submitted to SIPO for recording:
- An application form for the filing of patent license contracts signed or affixed to seals by the licensor or the patent agency authorized by the licensor;
- A copy of the patent exploitation license contract;
- The identity certification of the parties;
- A power of attorney that specifies the authority of the patent agency (if any) authorized by the licensor;
- Any other materials if required.
In the previous regulations for filing of patent license contracts, under some situations such as where the patent right has expired or is declared invalid, or the term of the license is longer than the term of the patent, the recording will not be granted. The Measures provide additional circumstances under which the recording will not be granted. For example, without the consent from the pledgee, the pledged patent will not be recorded. In addition, the recording will not be done if payment of the annual licensing fees for the patent is delayed, or the contract is in conflict with a patent license contract that has been filed. In addition, if the procedures regarding the patent are suspended due to a dispute over patent ownership, the recording will also not be granted.
- Measures for Filing of Patent Licensing Contracts
- Issuing Authority: The State Intellectual Property Office
- Date of Issuance: June 27, 2011 / Effective Date: August 1, 2011