QBPC Position Paper on Implementing Regulations of Patent Law
In March 2009, State Council Legislative Affairs Office (SCLAO) published the Draft Amendment to Implementing Regulations of Patent Law (hereinafter referred as “the Draft”) and solicited QBPC’s comment. QBPC Patent Committee promptly translated the Draft into English, sent it to all members for comment and compiled QBPC position paper. Members raised comprehensive comments and suggestions on below provisions:
1. Foreign Filing License. The draft provided that any entity or individual submits international applications for a patent for invention or utility model completed in China, it or he shall apply to Patent Administration Department of State Council for secret examination. QBPC members think that it’s hard to define “completed in China”, as many inventions or utility models are jointly completed by research centers based in different countries. They also recommend that only technologies whose export is prohibited or restricted by the Administrative Regulation on Technology Import and Export of China need to be applied for the secret examination. Moreover, they suggest the patent examination period should be as short as possible to facilitate right holder’s timely submission of international application.
2. Submit the license contract to the Patent Administration Department under the State Council for record. The draft provided that where the record is not set, bona fides third party shall not be opposed. Members are worried that this provision will add more burdens on right holders and cause uncertainty in IP trade, thus suggest this provision be deleted.
3. Compulsory license. The draft doesn’t provide the detailed provisions for compulsory license. Members recommend adding provisions about conditions, exemptions and procedure for compulsory license according to TRIPs.
4. Remunerations. The draft provides specific amount and percentage of profit for remuneration, but many members think that this provision will incur a lot of difficulties and even disputes to companies. They suggest such specific amount and percentage be revised.
5. Patent Infringement. The draft lists patent infringement act as patent passing-off. This will make confusion in jurisdiction, as patent infringement case shall be heard by the court, not governed by patent administration department. Moreover, the patent infringement act will be exposed to the threat of criminal prosecution, as serious patent passing-off act is a kind of criminal act.
In addition, members provided suggestions on provisions related to interested persons to apply for patent evaluation report, injunction, indirect infringement, genetic resource disclosure requirement, patent protection to computer program and etc.
For detailed information, please refer to below position paper both in English and Chinese:
QBPC Position Paper on Implementing Regulations of Patent Law - EN - final
QBPC Position Paper on Implementing Regulations of Patent Law - CH - final 