AIPLA Comments on Draft Implementation Rules of the Chinese Patent Law

Written January 10, 2021

The American Intellectual Property Law Association (AIPLA) appreciates the opportunity to comment on the Draft Implementation Rules of the Chinese Patent Law. Attached is a table listing our detailed comments, some of which are also summarized below.

AIPLA is a national bar association of approximately 8,500 members engaged in private or corporate practice, in government service, and in the academic community. AIPLA members represent a wide and diverse spectrum of individuals, companies, and institutions involved directly or indirectly in the practice of patent, trademark, copyright, trade secret, and unfair competition law, as well as other fields of law affecting intellectual property. Our members represent both owners and users of intellectual property. Our mission includes helping establish and maintain fair and effective laws and policies that stimulate and reward invention while balancing the public’s interest in healthy competition, reasonable costs, and basic fairness.

AIPLA commends the China Intellectual Property Administration (CNIPA) on its efforts to provide the draft Implementation Rules of the Chinese Patent Law for supporting the 4th amendments to the Chinese Patent Law, which are improvements of the Chinese patent system. AIPLA appreciates the opportunity to provide comments to the draft Implementation Rules. AIPLA would also welcome the opportunity to provide additional comments on any specific revisions to the language of the draft Implementation Rules that may be drafted and proposed in response to this initial round of comments.

The absence of comments on any part does not reflect support or lack of support of this part by AIPLA.

AIPLA welcomes many of the proposals in the draft Implementation Rules, including:
• The ability to revise and/or restore priority claim (new Articles 31-1, 31-2, and 110-1).
• The ability to add contents missing from the priority document(s) to the application by incorporation by reference (new Article 39-1 and revised Article 40).
• Introduction of patent term adjustment for unreasonable delay (New Articles 85-2 and 85-3).
• Introduction of patent term compensation for patents related to drug approval. (New Articles 85-4 to 85-8).
• Allowance of the use of electronic signature (revised Article 119).

AIPLA respectfully makes suggestions and seeks clarifications on the following issues, which are detailed in the attached table:
• Clarification on the deemed date of receipt of notices issued by the CNIPA, which determines the deadline to respond to such notices (Article 4).
• Exclusion from confronting bona fide third parties for license contracts not recorded at the CNIPA (revised Article 14).
• Possible exclusion of Chinese citizens with foreign residency from applying for patents (Article 16).
• Exclusion of international conventions from non-prejudicial disclosure (Article 30).
• Handling of domestic priority claim (revised Article 32).
• Minimum filing requirements (revised Article 39 and deleted Article 121).
• Potential discrepancies on handling of incorporation by reference for PCT and non-PCT applications (revised Article 40).
• Ability of CNIPA to raise new grounds ex officio at re-examination and invalidation (new articles 62-1 and 68-1).
• Ability of CNIPA to continue with invalidation even when the invalidation petitioner has withdrawn (revised Article 72).
• Grounds to suspend disputes handled by the CNIPA (revised Article 82).
• Issues on patent false marking (revised Article 84).
• Time limit to apply for patent term adjustment (new Article 85-2).
• Uncertainty on impact of incorporation by reference to patent term adjustment (new Article 85-3).
• Potential ambiguity on patent term compensation related to drug approval (New Article 85-4).
• Issues on use of electronic signature (revised Article 119).

We appreciate the opportunity to provide these comments on the Draft Implementation Rules of the Chinese Patent Law, and we would be pleased to answer any questions that our comments may raise.

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