China,  Patent Term Extension,  Updates and Changes

CNIPA Releases Interim Measures for the Amended Chinese Patent Law Going Into Effect June 1, 2021

Breaking News! We finally have more details about the new Chinese Patent Law which will go into effect on June 1, 2021. The full set of measure can be found at this link. Below are some pertinent points.

No Implementation Rules . . . . Yet

The new Implementation Rules will not be available by June 1, 2021. Accordingly, some submissions to the CNIPA made on or after June 1, 2021 will not be examined until after the Implementation Rules are out.

Patent Term Adjustment for Patent Office Delay

Applicants can request for patent term adjustment for any case granted after June 1, 2021. If applicants have already received a Notice of Allowance, they ensure that the applications will be granted after June 1, 2021 to take advantage of the new law.

Patent Term Extension for Drugs Regulatory Delay

Starting June 1, 2021, Applicants can request for patent term extension for patents covering drugs undergoing regulatory approval, provided that the request is made within 3 months of drug market approval.

Design Patents

A design patent’s application date is crucial for determining whether it falls under the old law or the new law. Most notably, the new law has a 15 year patent term, versus 10 years under the old law. Additionally, applicants can now file for partial designs after June 1, 2021, and claim priority to domestic design application. To take advantage of the longer patent term, applicants should try to ensure their pending design patent applications are filed on or after June 1, 2021.

Open License

The Open License Scheme will be available starting June 1, 2021.

Examination

The grounds for rejecting abnormal applications and methods of nuclear transformation are legally available for all applications regardless of whether they are filed before or after Jun 1, 2021.

In short, none of the above measures are particularly surprising, although it is a bit surprising that the new Implementation Rules are not out yet, and it’s unclear when they will be out. The main message seems to be that, if you are able, delay grant of your pending applications (e.g., by not paying the grant fee until the last minute), in order to take advantage of the multiple advantageous provisions under the new law.

We will keep you updated as soon as any new information is released.

About the Authors

Jennifer Che, J.D. is Vice President and Principal at Eagle IP, a Boutique Patent Firm with offices in Hong Kong, Shenzhen, and Macau.

Yolanda Wang is a Principal, Chinese Patent Attorney, and Chinese Patent Litigator at Eagle IP, a Boutique Patent Firm with offices in Hong Kong, Shenzhen, and Macau.

Sally Yu is a Chinese Patent Attorney at Eagle IP, a Boutique Patent Firm with offices in Hong Kong, Shenzhen, and Macau.

This article is for general informational purposes only and should not be considered legal advice or a legal opinion on a specific set of facts.

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