Comments on: Third Revision Of Patent Law In China http://www.ip-watch.org/weblog/2009/09/08/third-revision-of-patent-law-in-china/ Original news and analysis on international IP policy Thu, 11 Mar 2010 23:52:59 +0000 http://wordpress.org/?v=2.7.1 hourly 1 By: Wenting Cheng http://www.ip-watch.org/weblog/2009/09/08/third-revision-of-patent-law-in-china/comment-page-1/#comment-3212024 Wenting Cheng Thu, 22 Oct 2009 01:26:55 +0000 http://www.ip-watch.org/weblog/?p=5963#comment-3212024 Hi, Philippe! Thank you very much for your interest in the Chinese Patent Law and excellent questions. First of all, I would like to clarify the subtle difference between the Implementing Regulations and Guidelines for Examination: the former is a national legislation adopted by the Standing Committee of the National People’s Congress and the latter is by nature a ministerial rule issued by SIPO. From previous experience, the update of Implementing Regulations should keep in neck with that of Patent Law; however, it is not necessary for the Guidelines for Examination to strictly keep in pace with the Patent Law. Notably, the current Guidelines for Examination was adopted in the year 2006 where there is no change in the Patent Law. Admittedly, for the purpose of consistency of the content, it is logical that both of them should be adopted before the Patent Law came into force. However, the involvement of a “asking for comments” in the legislative process, while providing necessary transparency and democracy, practically paces down the process per se. Personally, I am not sure when Implementing Regulations and Guidelines for Examination will be published — hopefully, by the end of this year or early next year; however, I am sure the rule makers are feeling the pressure and are pacing up, since as you said, it is weird. As for the focuses in the present stage, it is indeed the implementing issues that take most concentration. Notably, issues still to be decided includes, but not limited to, the following: -the procedure of the confidentiality examination (to be discussed in the forthcoming article) -preservation of evidence as a preliminary measure (forthcoming). Last but not least, I’d like to say something on the Transitional Rules. You are very alert of the Chinese legislative process to mention the Transitional Rules. By nature, it is mainly an explanation on law application and by no means an alternative of the Implementing Regulations. According to the Translational Rules, the provisions of the Patent Law (2008) on application of the Patent Law (2008) in accordance to the time of patent application, enforcement issues (infringement, counterfeiting patents), patent commission by foreign parties (no longer required to commission patent application to the State Council nominated patent agencies) and compulsory license have already come into forth from October 1, 2009. This means, by and large, Patent Law (2008) has been effective. Hi, Philippe!

Thank you very much for your interest in the Chinese Patent Law and excellent questions.

First of all, I would like to clarify the subtle difference between the Implementing Regulations and Guidelines for Examination: the former is a national legislation adopted by the Standing Committee of the National People’s Congress and the latter is by nature a ministerial rule issued by SIPO. From previous experience, the update of Implementing Regulations should keep in neck with that of Patent Law; however, it is not necessary for the Guidelines for Examination to strictly keep in pace with the Patent Law. Notably, the current Guidelines for Examination was adopted in the year 2006 where there is no change in the Patent Law.

Admittedly, for the purpose of consistency of the content, it is logical that both of them should be adopted before the Patent Law came into force. However, the involvement of a “asking for comments” in the legislative process, while providing necessary transparency and democracy, practically paces down the process per se. Personally, I am not sure when Implementing Regulations and Guidelines for Examination will be published — hopefully, by the end of this year or early next year; however, I am sure the rule makers are feeling the pressure and are pacing up, since as you said, it is weird.

As for the focuses in the present stage, it is indeed the implementing issues that take most concentration. Notably, issues still to be decided includes, but not limited to, the following:
-the procedure of the confidentiality examination (to be discussed in the forthcoming article)
-preservation of evidence as a preliminary measure (forthcoming).

Last but not least, I’d like to say something on the Transitional Rules. You are very alert of the Chinese legislative process to mention the Transitional Rules. By nature, it is mainly an explanation on law application and by no means an alternative of the Implementing Regulations. According to the Translational Rules, the provisions of the Patent Law (2008) on application of the Patent Law (2008) in accordance to the time of patent application, enforcement issues (infringement, counterfeiting patents), patent commission by foreign parties (no longer required to commission patent application to the State Council nominated patent agencies) and compulsory license have already come into forth from October 1, 2009. This means, by and large, Patent Law (2008) has been effective.

]]> By: Philippe http://www.ip-watch.org/weblog/2009/09/08/third-revision-of-patent-law-in-china/comment-page-1/#comment-3211156 Philippe Mon, 19 Oct 2009 12:23:48 +0000 http://www.ip-watch.org/weblog/?p=5963#comment-3211156 Very interesting article. However, many comments refer to draft documents, ie “implementing regulations to the Patent law”, and “Guidelines for examination”. Therefore, I have 2 questions: - In your opinion, when will the implementing regulations be published? Not in 2009 I'd say, as some “transitional measures” have been published on September 29, 2009 - What are, to your knowledge, the parts that are still debated (it is somewhat weird that there are still discussions... after the law coming into force, isn’t it?). Very interesting article. However, many comments refer to draft documents, ie “implementing regulations to the Patent law”, and “Guidelines for examination”. Therefore, I have 2 questions:
- In your opinion, when will the implementing regulations be published? Not in 2009 I’d say, as some “transitional measures” have been published on September 29, 2009
- What are, to your knowledge, the parts that are still debated (it is somewhat weird that there are still discussions… after the law coming into force, isn’t it?).

]]> By: William New http://www.ip-watch.org/weblog/2009/09/08/third-revision-of-patent-law-in-china/comment-page-1/#comment-3204514 William New Thu, 24 Sep 2009 15:33:23 +0000 http://www.ip-watch.org/weblog/?p=5963#comment-3204514 <em>Posted on behalf of author Wenting Chen:</em> "Thank you very much for your question. It may be separated into two questions: (1)whether Patent Law (2008) will influence a company with a registered trademark in China and (2) what are possible remedies for a company finding on online selling of counterfeits of its own goods? First of all, the Patent Law (2008) will only impact a company having a patent in China or intended to apply a patent in China. However, it is irrelevant whether or not this company have a trademark registered in China. There are indeed some changes concerning the coordination of Chinese application and PCT application.This will be discussed later in this article. Secondly, it may be of your real concern: what should the company do with online counterfeit? Online counterfeit can be considered as trademark infringement stipulated in Article 52 (1) <a href="http://www.npc.gov.cn/englishnpc/Law/2007-12/13/content_1384018.htm" rel="nofollow">Trademark Law of PRC</a>: "using a trademark which is identical with or similar to the registered trademark on the same kind of commodities or similar commodities without authorization". Therefore, remedies in Article 53 may be sought. According to Article 53, the owner of the registered trademark or any interested party may bring a suit in a court or request the administrative department for industry and commerce to handle the matter. When the said department determines that the fact of infringement is established, it shall order the infringer to cease infringing upon that right immediately, and it shall confiscate and destroy the goods involved and the tools specially used to manufacture the said goods and counterfeit the representations of the registered trademark, and may also impose a fine. Where the party is dissatisfied with the decision of the department, he may, within 15 days from the date the notification is received, bring a case to court in accordance with the Administrative Procedure Law of China. If the infringer neither brings a suit at the expiration of the time limit nor complies with the decision, the administrative department for industry and commerce may request the court to enforce its decision. The administrative department for industry and commerce that handles the dispute may, as requested by the party, mediate as a settlement on the amount of compensation for the infringement of the exclusive right to the use of the trademark. Where mediation fails, the party may, in accordance with the Civil Procedure Law of China, bring a suit to court. Basically, civil route and administrative route are both available. However, administrative route is faster and more effective, and therefore, more recommendable. Up to date, a "Letter of Warning" is not legally enforceable." Posted on behalf of author Wenting Chen: “Thank you very much for your question. It may be separated into two questions: (1)whether Patent Law (2008) will influence a company with a registered trademark in China and (2) what are possible remedies for a company finding on online selling of counterfeits of its own goods?
First of all, the Patent Law (2008) will only impact a company having a patent in China or intended to apply a patent in China. However, it is irrelevant whether or not this company have a trademark registered in China. There are indeed some changes concerning the coordination of Chinese application and PCT application.This will be discussed later in this article.
Secondly, it may be of your real concern: what should the company do with online counterfeit? Online counterfeit can be considered as trademark infringement stipulated in Article 52 (1) Trademark Law of PRC: “using a trademark which is identical with or similar to the registered trademark on the same kind of commodities or similar commodities without authorization”. Therefore, remedies in Article 53 may be sought.
According to Article 53, the owner of the registered trademark or any interested party may bring a suit in a court or request the administrative department for industry and commerce to handle the matter. When the said department determines that the fact of infringement is established, it shall order the infringer to cease infringing upon that right immediately, and it shall confiscate and destroy the goods involved and the tools specially used to manufacture the said goods and counterfeit the representations of the registered trademark, and may also impose a fine. Where the party is dissatisfied with the decision of the department, he may, within 15 days from the date the notification is received, bring a case to court in accordance with the Administrative Procedure Law of China. If the infringer neither brings a suit at the expiration of the time limit nor complies with the decision, the administrative department for industry and commerce may request the court to enforce its decision. The administrative department for industry and commerce that handles the dispute may, as requested by the party, mediate as a settlement on the amount of compensation for the infringement of the exclusive right to the use of the trademark. Where mediation fails, the party may, in accordance with the Civil Procedure Law of China, bring a suit to court.
Basically, civil route and administrative route are both available. However, administrative route is faster and more effective, and therefore, more recommendable. Up to date, a “Letter of Warning” is not legally enforceable.”

]]> By: Sonce http://www.ip-watch.org/weblog/2009/09/08/third-revision-of-patent-law-in-china/comment-page-1/#comment-3204453 Sonce Thu, 24 Sep 2009 11:36:44 +0000 http://www.ip-watch.org/weblog/?p=5963#comment-3204453 Hi Thank you for a wonderful article. Can you please clarify to me, what impact will, if any, (the third amendment that enters into force form 1 OCT 09) will have on a company like for an example Ralph Lauren Polo, that have a registered trademark in China? Can the Company force a website selling counterfeit RLP items to remove them? KR/ Hi

Thank you for a wonderful article.
Can you please clarify to me, what impact will, if any, (the third amendment that enters into force form 1 OCT 09) will have on a company like for an example Ralph Lauren Polo, that have a registered trademark in China? Can the Company force a website selling counterfeit RLP items to remove them?

KR/

]]> By: China implements third revision of its patent law | Technology Transfer Tactics http://www.ip-watch.org/weblog/2009/09/08/third-revision-of-patent-law-in-china/comment-page-1/#comment-3200911 China implements third revision of its patent law | Technology Transfer Tactics Wed, 09 Sep 2009 17:19:03 +0000 http://www.ip-watch.org/weblog/?p=5963#comment-3200911 [...] Source: IP Watch [...] [...] Source: IP Watch [...]

]]>