The Greater China IP Updates

 By Lyndon 

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Temporary Rules Regarding Implementing Regulations of the Fourth Amendment to the Chinese Patent Law

The Fourth Amendment to the Chinese Patent Law became effective on June 1, 2021.  However, the corresponding amendments to the Implementing Regulations of the Chinese Patent Law and the Patent Examination Guidelines have yet to be enacted.  CNIPA has published the above titled Temporary Rules to implement the changes in the rules in the meantime:

1. Applications covering partial designs will be accepted.
2. If an applicant believes that a relevant disclosure made within 6 months before the application date is in the public interest and during a national emergency, they may petition for an exception to novelty-defeating disclosures regarding the application.
3. A design patent application may claim priority to a first-filed Chinese design patent application for the same subject matter within 6 months of the first filing.
4. For invention and utility model applications, the deadline for submitting a copy of the priority application, if priority is claimed, is 16 months from the earliest priority application date.
5. If a patent is granted after 4 years from the application date and 3 years from the date asking for substantive examination, the patentee may apply for patent term extension within 3 months of the grant publication date.  This will only be accepted on the basis of unreasonable delays during processing of the patent and not if the delays were caused by the applicant.
6. A patentee may apply for a patent term extension for an approved new drug as compensation for time used for regulatory evaluation and approval, but it must be within 3 months of the approval and can extend the patent term by up to a maximum of 5 years.  However, the total remaining term of the patent may not exceed 14 years after the drug enters the market.
7. A patentee may declare the intention to offer an Open Patent License for the patent to any interested party.
8. A defendant in an infringement action involving a utility model or design patent before a court or administrative agency can apply for a Patentability Assessment Report from the CNIPA.  Previously, only the patentee and interested parties could do so if the court agreed.  With this new option, the report will become more important when enforcing utility model or design patents.
9. The CNIPA will henceforth more closely scrutinize whether an applicant has followed the principle of honesty and credibility and whether public interest or another personˇ¦s rights have been abused during the application process.
10. The term of a design patent will now be 15 years compared to the previous term of 10 years.

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Hong Kong Upgrades Public Online Search System

The Intellectual Property Department of Hong Kong announced in May, 2021 that they would revamp the Public Online Search System.  Due to a sharp increase in the searches on the Registers of Patents, Trademarks, and Designs conducted via the Public Online Search System, users have reportedly experienced delays in the response time recently. To tackle the issue, the relevant personnel have been working on the system to expand the capacity and manage the demand flow.  The causes for the various issues have been examined and it is expected that after adjustment the updated system will be more resilient and stable in the face of rising demand.

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Hong Kong Grants First Standard Patent by Original Grant

The Patents Registry of the Intellectual Property Department has granted the first standard patent under the original grant patent system (OGP) this week.  The Original Grant Patent System was launched in December 2019 as part of a push to make Hong Kong an Intellectual Property regional center.  The OGP system creates a direct route for inventors to obtain standard patent protection in Hong Kong for a maximum term of 20 years.  Previously, the only way to get IP protection in Hong Kong was by re-registration of a patent previously granted in another jurisdiction.  The first standard patent by original grant was for an invention related to the use of artificial intelligence to manage inventory in an e-commerce system.  As of May 31, 2021, the Patents Registry had received a total of 426 OGP applications, of which 33% were submitted by Hong Kong residents or enterprises and 67% were from non-local applicants.  The Secretary for Commerce and Economic Development, Mr. Edward Yau said ˇ§The launch and continued development of the OGP system is one of the strategic measures that the Hong Kong Government is pursuing to ensure that the local patent system advances with the times and meets the needs of Hong Kongˇ¦s innovation and technology and the creative industries, and in turn, our long-term economic development.ˇ¨

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