Promoting the application of patent transformation and supporting all-round innovation —— Interpretation of the decision to amend the detailed rules for the implementation of the patent law

Patent system is an effective innovation incentive system. In order to ensure the effective implementation of the Patent Law after the fourth amendment and meet the needs of joining The Hague Agreement on the International Registration of Industrial Designs (1999 version), a few days ago, the State Council’s Decision on Amending the Detailed Rules for the Implementation of the Patent Law of People’s Republic of China (PRC) (hereinafter referred to as the Decision) was officially promulgated and will take effect on January 20, 2024. Experts in the industry said that with the revision of the Patent Law and the revision of the detailed rules for the implementation of the Patent Law, China’s patent system has entered the ranks of the world’s advanced patent systems at the legislative level, which will provide new assistance for promoting the transformation and application of patents and enhancing the country’s scientific and technological innovation capability.

Regulating abnormal patent applications and improving patent quality

In order to crack down on abnormal patent applications and patent abuse, Article 20 of the revised Patent Law introduces the principle of good faith, requiring that patent rights shall not be abused to harm public interests or the legitimate rights and interests of others. On this basis, the Decision makes more specific provisions, requiring patent applicants to "file all kinds of patent applications on the basis of real invention and creation activities, and shall not resort to deceit", and "the patentee shall not make a declaration of opening the license by providing false materials or concealing facts, or obtain a reduction or exemption of the annual patent fee during the implementation of the open license".

"Abnormal application is a chronic disease in the patent field." Cui Guobin, a professor at the Intellectual Property Law Research Center of Tsinghua University Law School, pointed out that the main purpose of patent applicants’ fraud and patchwork of patent applications is to use the loopholes in policies such as patent application grants from governments at all levels or tax incentives for high-tech enterprises to defraud grants, subsidies or other preferential treatment. In 2017, China National Intellectual Property Administration issued regulations to regulate abnormal patent applications. In 2018, China National Intellectual Property Administration jointly issued a memorandum of cooperation with various departments to carry out joint punishment for serious untrustworthy subjects in the field of intellectual property rights (patents), and listed abnormal patent application as the main target.

Cui Guobin pointed out that the above-mentioned regulations and memorandums mainly regulate the aspects of not reducing patent fees, publicly notifying, not subsidizing or rewarding, investigating criminal responsibility (defrauding subsidies and rewarding), and restricting the qualification to participate in certain business activities, and there is no provision for direct administrative punishment measures against applicants. The "Decision" fills this legislative vacancy, and authorizes the department responsible for patent law enforcement to warn the applicant of abnormal patent application or impose a fine of less than 100,000 yuan.

Systematically improve the level of patent protection

The duration of patent protection is one of the core contents of patent protection system. In view of the unreasonable delay in the process of patent granting, the patent term compensation system was introduced in the revision of the patent law, that is, the invention patent term compensation and the drug patent term compensation. The "Decision" added a special chapter on patent term compensation, which clearly put forward the conditions and time requirements, the calculation method of compensation period and the scope of compensation for patent term compensation, laying a normative foundation for the operation of the patent term compensation system.

Liu Yinliang, a professor at Peking University Law School, pointed out that the time limit compensation for invention patents aims to make up for the unreasonable delay in the examination procedure of invention patent applications, which can not only ensure the patentee to enjoy the patent right for enough time, but also promote the maintenance of patent examination efficiency, while the time limit compensation for drug patents helps to make up for the time occupied by the new drug listing review and approval.

Liu Yinliang explained that most kinds of product patents or method patents can be used for production and sales after the technology is mature, but drugs need to be reviewed by the drug supervision and administration department for safety and effectiveness. The inventor or patentee can only produce and sell after the management department has examined and approved it. He pointed out that the approval time can substantially shorten the protection period of drug patents and reduce the effect of drug patents to stimulate innovation, and drug inventions need patent protection because of their high investment and high risk. Therefore, the patent law compensates the patent for new drug invention for the time of review and approval by the drug supervision department, but the longest time is not more than 5 years, so as to balance public interests such as public health.

The Decision also further improved the system of handling and mediating patent disputes, extended the subjects with the right to handle and mediate patent disputes to the departments in charge of patent work of the district people’s governments of prefecture-level cities, autonomous prefectures, leagues, regions and municipalities directly under the Central Government, and clarified the definition standards of patent infringement disputes that have great influence throughout the country.

Promote patent creation and transformation.

In order to promote patent creation, transformation and application, the Decision has improved relevant systems in many aspects.

Tang Suqin, a professor at the School of Intellectual Property, Chinese Academy of Sciences, pointed out that the Science and Technology Progress Law takes "improving the ability to create, use, protect, manage and serve intellectual property rights" as an important measure to implement the national intellectual property strategy, and the Decision once again emphasizes "creating, using, protecting, managing and serving", especially putting forward new requirements for the open sharing of "patent basic data", which is helpful to

In practice, there is often information asymmetry between the patentee and the enterprise. The patentee struggles to find a commercialization path, while the enterprise suffers from the lack of applicable patents. Cui Guobin said that the revised Patent Law introduced a patent open licensing system, encouraging patentees to voluntarily announce licensing conditions, so as to facilitate implementers to obtain patent licenses. On the basis of the framework of the open licensing system outlined in the patent law, the Decision supplements more specific operational rules.

The "Decision" requires that the patentee shall specify the patent number, the name of the patentee, the license fee standard and payment method, the license period, etc. when issuing the license statement; After the two parties reach an open license, "they shall file with the patent administration department of the State Council on the basis of written documents that can prove that the license has been reached". According to this regulation, the patentee should clearly state the core terms of patent license, especially the license fee standard, in the statement of opening license.

The "Decision" also further improves the reward system for service inventions and creations, stipulates that units granted patent rights can agree with inventors and designers on the way and amount of rewards and rewards, encourages the implementation of property rights incentives, and enables inventors or designers to share innovation benefits reasonably by means of equity, options and dividends; Appropriately raise the legal reward standard after the patent right is granted (the minimum bonus for an invention patent is not less than 4,000 yuan, and the minimum bonus for a utility model patent or design patent is not less than 1,500 yuan), and adjust the legal reward standard after the transformation to give reasonable remuneration in accordance with the provisions of the Law on Promoting the Transformation of Scientific and Technological Achievements. (Reporter Jin Wei)