US Patent Reform

U.S. Department of Commerce IPR in China Webinar Series March 2,2009 Proposed Revision of China Patent Regulation -Detailed Rules for the Implementation of the Patent Zhe (Amy) Peng, Ph.D student University of Washington School of Law zhepeng@u.washington.edu Law ·Detailed Rules for the Implementation of the Patent Law New Name? Detailed Rules for the Implementation of the Patent Law Implementing Regulations to the Patent Law www. Lawinfochina.com, or www.mykh.net/bbs/viewthread.php?tid=218920 Outline  Detailed Rules for the Implementation of the Patent Law  Background Regulation  Recent Updates in Patent Law  Legislation procedure   A draft proposed by SIPO Background-what is ― Detailed Rules ― ‖ Patent Law Primary resource of patent law in China Detailed Rules for the Implementation of the Patent Law Department of regulations Local regulations Judicial Interpretation by the Supreme Court Background—updates in 2008 National Strategy Outline 2008  Patent Law 2008  Detailed Rules for the Implementation of the Patent Law,2002  Proposed Revision on the ―Detailed Rules‖ 2008  Background--Legislation Procedure Proposal calling suggestions SIPO, Statute Section Sponsors research projects, conducts survey and interview Proposal for submission SIPO, Statute Section Revises the draft, submits to state council Draft of Amendment State Council, Committee of Law Conducts hearing, discussion session and vote to decide on approval Amendment State Council Approves the amendment to the regulation Proposed revision Compulsory license  Patentability  Procedure --examination  Procedure-- invalidation  Administrative enforcement  Compulsory License – Patent Law  Failure to exploit or fully exploit patents    without justifiable reason 3 years after patent granted, or 4 years after filing application Failure of license negotiation TRIPS, 2001 Doha Declaration    Importing or exporting patented drug  Monopolizing act  Eliminating or reducing impact on competition Procedure Compulsory License—Proposed Detailed Rule  Failure to exploit or fully exploit patents  can not fulfill the domestic market needs (Article 80)  Importing or exporting patented drug (WTO, 2001 Doha Declaration)   Notice to WTO Special label /color/shape/dress (Article 82-86) Not provided  Monopolizing act  Compulsory License—Proposed Detailed Rule  Procedure  Both patentee and potential licensee (Article 79)   Notice Opportunity to be heard Patentability Genetic Resources (Article 32,122,49,56)  Utility Patent & Design Patent  Scope of Examination (Article 49)  Patentability Search Report (Article 58, 59)  Patentability-- Genetic Resources  Non-disclosure Only subject in examination  Not a basis for invalidation   Violating law or regulation Subject to examination  A basis for invalidation  Patentability--Utility Model & Design Patent  Scope of examination  No substantive examination  Preliminary examination  Patentability search report  SIPO, by request  Evidence in infringement litigation’  Evidence burden on patentee  Impact :Both good and bad news Patentability-Utility Model & Design Patent  Scope of examination  Broader preliminary examination  Obviously not patentable  Utility model patent   Novelty Utility Prior design Subject matter-- Graphic design for identification (Patent Law 2008)  Design patent   Patentability --Utility Model & Design Patent  Patentability search report-broader Old Patentability search report Utility model New Patentability evaluation report Utility model & design patent Prior art, suggesting invalidation on novelty or obviousness only Overall patentability evaluation Requested by patentee None By patentee/interested party(licensee, etc) Publishing/opportunity to be heard Patentability--Utility Model & Design Patent  Impact Bad news: More difficult to get a patent  Good news: More reliable patent rights  Good news: possibly speedy litigation   Challenges Workload on SIPO  Consistency of invalidation rule   Between Examination Corporation Center and Re-examination Board Examination procedure  Confidentiality inspection--invention and utility patent (Article 10,12)  Double patent (Article 18)  Application Fee (Article 106,107)  PCT(Article 114, 123)  Requirement on Application Documents (Article 3, 21) Examination procedure  Confidentiality  Inspection-International application No need to file domestic application anymore (Patent Law 2008)  But, before filing international application SIPO confidentiality inspection  Inspecting or not: notification in 2 months  If inspected, decision notified in 4 months  No notification, go ahead to file international application  Examination procedure  Confidentiality  inspection related to national interest Defense /other national interest  what is new ?  All applications go to SIPO  SIPO will decide if transfer to the Defense Department  Decide in 4 months. Examination procedure  Double  patent-utility model and invention Two applications based on one invention Utility model and invention patent  Must declared in application   Only one patent can be granted Declare to abandon utility model in order to get invention patent (Patent Law 2008)  Declaration effective when invention patent granted  Examination Procedure -Application Fee  Simplified procedure Old: Multiple charging items  New: Merging items   Refund policy Old: 1 year  New: 3 years  Examination Procedure-PCT Domestic application: 30 months  Extension : up to 32 months  Documents required to be Chinese  Declaration of domestic application in Chinese  Translation of any revision  Invalidation procedure  Standing of complaint   Invalidating design patent  Conflict with prior rights Old: judicial/administrative decision required  Termination of procedure   When complaint to SIPO is cancelled Old : procedure terminated Invalidation procedure  Standing of complaint   Invalidating design patent  Conflict with prior rights Old: judicial/administrative decision required  New: no requirement (Deleting current Article 65)  Impact: easier for trademark/copyright holder Invalidation procedure  Termination of procedure When complaint to SIPO is cancelled  Old : procedure terminated  New: not terminated (Article 71)   If sufficient evidence to prove invalidation Administrative Enforcement  Local IP Office  Decide on patent infringement cases  Injunctions only Decide on other patent dispute (no invalidation)  Mediation  Inspecting patent passing off  Administrative Enforcement  What is new ? SIPO (Article 94)  Suspending procedure (Article 96)  Administrative Enforcement  SIPO Authority to decide and mediate  Authority to inspect patent passing off  By request from Local IP Office  Administrative Enforcement  Suspending procedure   General rule: SIPO or local IP Office procedure suspended when invalidation procedure commences Exceptions    Obviously insufficient evidence Invention patent Utility model or design patent   affirmed by re-examination board Patentability Evaluation Report in favor of validity   Obviously not infringement Practicing prior art Administrative Enforcement  Impact Higher quality  More consistency  Speedy resolution   Challenge  Local IP Office’s competence Problematic prior art defense  Claim construction  Thank you! Question and comments ? Contact me at zhepeng@u.washington.edu