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China’s National Intellectual Property Administration Releases Draft Amendments to Several Provisions Regarding the Regulation of Patent Applications

On May 6, 2021, China’s National Intellectual Property Administration (CNIPA) released Draft Amendments to Several Provisions Regarding the Regulation of Patent Applications for comment (关于规范申请专利行为的若干规定修改草案(征求意见稿)). The Amendments aim to supplement and improve the definition of irregular (i.e., low-quality) patent applications; to clearly stipulate the examination procedures for irregular patent applications; and to update and improve the relevant handling measures for irregular patent applications.  Note that Article 3(5) may limit the ability of IP-holding companies to file Chinese patent applications depending on actual practice and interpretation at CNIPA.

Article 3 of the draft Amendments define irregular (or abnormal) patent application behavior as

The following types of acts shall fall within the scope of “irregular patent application” as mentioned in these Provisions:
(1) The contents of several patent applications submitted are obviously the same, or are essentially formed by simple combination of different invention-creation features or elements;
(2) The patent application submitted contains any content of the invention-creation that is falsified or has altered experimental data or technical effects, or copying, simply replacing, or piecing together existing technology or existing designs, among others.
(3) The contents of multiple patent applications submitted are randomly generated mainly by computer technology;
(4) The invention-creation of the submitted patent application is obviously inconsistent with technical improvement or design common sense, or is minimized, excessive, or unnecessary to limit the scope of protection;
(5) The invention-creation for which the patent application is submitted is obviously inconsistent with the applicant’s or inventor’s actual research and development capabilities and resource conditions;
(6) Multiple patent applications that are substantially related to specific entities, individuals, or addresses are submitted in a malicious manner, consecutively, or otherwise.
(7) Transferring or accepting the right to apply for a patent or the patent right for any improper purpose, or falsely listing the inventor or designer;
(8) The patent agency, patent agent, or any other institution or individual acts as an agent, induces, abets or assists others, or colludes with them in the exploitation of various kinds of irregular patent applications;
(9) Other acts of irregular patent applications and the relevant acts in violation of the principle of good faith and disturbing the normal patent work order.

New Article 4 states

Where the CNIPA discovers or learns from a report during the procedures of patent application acceptance, preliminary examination, substantive examination, and reexamination or international phase procedures of international applications, and initially determines that there is an irregular patent application activity as referred to in these Regulations, it may form a special examination working group or authorize examiners to initiate special examination procedures in accordance with these regulations, and process them in batches, and notify applicants to withdraw relevant patent applications or legal procedures, or state their opinions within a specified time limit.
If the applicant is dissatisfied with the preliminary determination of the irregular patent application, he shall state his opinions and submit supporting materials within the specified time limit. If there is no response within the time limit without justifiable reasons, the relevant patent application shall be deemed to have been withdrawn, and the request for handling relevant legal procedures shall be deemed to have not been submitted.
After the applicant’s comments, if the CNIPA still considers it to be an irregular patent application as described in these Regulations, it may reject the relevant patent application according to law, or refuse to approve the request for handling the relevant legal procedures.
If the applicant is dissatisfied with the above-mentioned decision of the CNIPA, he may file an application for administrative reconsideration, reexamination request or file an administrative lawsuit in accordance with the law.
Renumbered Article 5 adds that
In serious cases, the CNIPA or local Intellectual Property Office shall impose penalties in accordance with laws and regulations; for other institutions or individuals, the local Intellectual Property Office shall impose penalties in accordance with the relevant provisions on investigating and punishing unqualified patent agency acts. Violation of other laws and regulations shall be punished in accordance with the law  and [evidence] shall be transferred to relevant departments for processing.
Article 5 also adds a new subsection 6, which reads:
For enterprises or individuals who have committed the acts described in Article 3 of these regulations, if they are suspected of constituting a crime in accordance with the Criminal Law of the People’s Republic of China, they shall be transferred to relevant agencies for investigation of criminal responsibility in accordance with the law.
The full text (Chinese only) is available here: 附件1:关于规范申请专利行为的若干规定修改草案(征求意见稿).
Comments are due June 6, 2021 and can be submitted as follows:
1. Log in to the Chinese Government Legal Information Network of the Ministry of Justice of the People’s Republic of China (http://www.moj.gov.cn, http://www.chinalaw.gov.cn), and enter the “立法意见征集” section of the main menu on the homepage.
2. Send your opinions via email to: tiaofasi@cnipa.gov.cn.
3. Fax : +86 (10)62083681
4. Mail to: Examination Policy Office of the Department of Legal Affairs, State Intellectual Property Office, No. 6 Xitucheng Road, Haidian District, Beijing, 100088 (please write “关于规范申请专利行为的若干规定” in the lower left corner of the envelope).
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Author:
Director of China Intellectual Property Practice

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