China is planning the third overhaul of its Patent Law and the draft amendments to the law have been turned over to the State Council for deliberation, according to the State Intellectual Property Office (SIPO), which was in charge of drafting the amendments.

SIPO spokesman Yin Xintian says the draft proposes significant revisions to the current Patent Law, and more than half of the current 69 provisions have been changed in the draft.

SIPO hosted an online interview with netizens in January and explained some of the most important proposed amendments.

Absolute novelty

Yin says the current Patent Law adopts the so-called "blended novelty standard". According to this standard, publication worldwide and public use or other means of disclosure only in China constitutes prior art. Under the system, public use or other means of disclosure outside of China can still become patents in China.

To bring China in line with patent practice worldwide, the draft adopts the absolute novelty standard for the first time. This means prior art also includes public use or other means of disclosure outside of China. Therefore, foreign applicants should keep an invention from being disclosed in any way anywhere before filing to patent the invention in China.

Disclosure of genetic resources

Much of the discussion during the drafting of the amendments focused on protecting China's genetic resources and traditional knowledge, says Song Jianhua, deputy director of the Legal Affairs Department of SIPO.

The draft sets out specific clauses dealing with the protection of genetic resources for the first time. These clauses stipulate that the genetic resource should be disclosed in the specification if the accomplishment of the invention relies on the acquisition and use of the genetic resource, and no patent shall be granted to inventions if their acquisition or use of the resource violates relevant laws and regulations.

These two stipulations are preliminary attempts to protect genetic resources by improving the patent system, says Song, adding that detailed requirements for the disclosure of genetic resources will be worked out later.

Design patents

Yin says the clause related to design patents in the amendments has been changed greatly in order to improve the quality of design patents. Design patents account for one-third of Chinese patents.

Under the current Patent Law, a design patent shall not be identical or similar to a prior design. The draft adds an additional requirement: It shall also be significantly different from element combinations of prior designs, which is somewhat like the inventiveness requirement for invention and utility model patents. Yin says the additional requirement obviously raises the threshold for design patents, which may help exclude so-called "junk design" patent applications.

The draft narrows the scope of design patents by ruling out the applications of planar printings in which the design pattern serves only an identification function. And the submission of a brief description of a design which is optional under the current law will become compulsory for design patent applicants.

The draft amendments also for the first time adopts a design application for multiple, similar product designs.

The draft also introduces a data retrieval system, which requires patentees to submit a related data-retrieval report to the judicial department or patent administrative department when filing litigation or administrative action against others.

Compulsory licenses

Yin says the sixth chapter of the draft includes significant amendments to compulsory licenses. According to the draft, compulsory licenses may be applied in the case of a national emergency or public interest. The draft stipulates that public health crises caused by epidemic diseases constitute a national emergency, and the prevention of epidemic diseases, control of the spread of epidemic diseases and treatment of patients with epidemic diseases all fall under the banner of public interest.

Compulsory licenses are also applicable for manufacturing patented pharmaceuticals that treat epidemic diseases for export to underdeveloped countries, according to the draft.

First filing

The current Patent Law requires Chinese entities and individuals to file applications for inventions developed in China first. The draft extends this requirement to both Chinese and foreigners and stipulates that failure to meet this first-filing-in-China requirement will lead to the rejection of the Chinese application.

Bad faith

According to the draft, if a patentee files litigation or administrative action, knowing that the patented invention belongs to prior art, the patentee will be held liable to the alleged infringer for damages.

Stronger patent administration

The draft also gives SIPO more power to handle infringement disputes, including the power to examine witnesses and other relevant parties, conduct investigations of premises, seize infringing goods and specialized equipment for infringement in severe cases and review or copy relevant documents such as contracts, receipts and accounting books.

(China Daily 03/05/2007 page9)