Patent Amendments ©(Part II of II)

The Greater China IP Updates – May 2023

By Lyndon

China’s National Intellectual Property Administration Releases 2023 Administrative Protection Work Plan

On March 7, 2023, the China National Intellectual Property Administration (CNIPA) released the 2023 National Intellectual Property Administration Protection Work Plan. The Plan mentions cracking down further on abnormal (irregular) patent applications and malicious registration of trademarks, completes the revision of the Implementation Rules of the Patent Law, and promotes the revision of the Trademark Law. Some highlights of the Plan are as follows:

1. The improvement and implementation of the intellectual property protection system shall be promoted. The amendment of the Detailed Rules for the Implementation of the Patent Laws shall be pursued forthwith.
2. There will be a crackdown on abnormal patent applications and malicious registration of trademarks. Patent application activities will be standardized, a rapid handling linkage mechanism will be established, the precise management list system for patent applications will be improved, the active verification and reporting mechanism will be improved, and the credit supervision and policy constraints on units and individuals that submit abnormal patent applications will be strengthened.
3. The management of key violations such as fraudulent use of other people’s identity information to apply for patents shall be strengthened, and if suspected crimes are found, the concerned individuals will be notified or transferred to the relevant judicial organs.

China Issues Draft Amendment to the Trademark Act

The China National Intellectual Property Administration recently took steps to amend the Trademark Act and announced the contents of the Draft Amendment in order to solicit opinions from as wide a section of society as possible. Some of the most notable highlights are as follows:

1. Trademark owners will need to actually use their trademarks and it will not be acceptable to reregister unused trademarks every 3 years in order to maintain their validity. The idea is that duplicate filings are a waste of examination resources, so it’s appropriate to close this loophole.
2. Trademark owners will be obliged to explain to the relevant authorities the status quo concerning the use of their trademarks every five years. Not complying with this regulation will result in a waiver of the trademark rights and cancellation of the registration. It is hoped that this regulation will force potential and actual trademark owners to consider more carefully about how seriously they need to have a trademark and also that they have a plan to use it.
3. The use of a trademark on the internet will now be considered as a valid use referred to in the Trademark Act. Since the internet has increasingly become a popular place for buying and selling goods and services, the Draft Amendment will incorporate using a trademark on the internet as a legitimate use of the trademark.
4. Enterprise names and social organization names will be included as prior rights or interests. For a trademark to be registered it cannot encroach upon the existing prior rights of others, so enterprise names and social organization names will be included as another protection object along with those that already have prior rights such as holders of geographical indications, portrait rights, design patent rights, name rights, copyrights and trade name rights.
5. Bad faith trademark filings will be dealt with severely. The amendment adds more details about what qualifies as a bad faith filing, and the corresponding penalties will be increased.