4th Amendments to the Chinese Patent Law

[Arthur Tan-Chi Yuan]

It was not too long ago, about 4 years, when the Chinese National People's Congress passed the third amendments to the Chinese Patent Law, and State Intellectual Property Office (SIPO) is already working hard for the next amendment.  SIPO actually started their preparation in late 2011 and the work to amendment the Chinese Patent Law the fourth time is placed on the State Council's legislative agenda in 2012.  Throughout 2012, SIPO has conducted workshops, meetings, hearings, etc., throughout the country to identify how to improve its current patent system.  They have identified issues and problems such as difficulties in obtaining evidence of infringement, infringement by repeat infringers, willful infringement, etc.  With those problems in mind, the main objective and goal of this fourth amendments is:

  1. Authorize the courts and administrative agencies the right to discover evidence in alleged infringements;
  2. Delegate to the administration department for patent-related work the duty to determine the amount of damages in infringements;
  3. Affirm the effective date and subsequent procedures of a decision on invalidity;
  4. Introduce a damage award system penalizing willful infringements;
  5. Delegate to the administration department for patent-related work the duty to investigate and cease willful infringement activities.

With the above objectives, SIPO started the process by seeking comments to the following sections of the patent law: sections 46, 47, 60-61 and 63-65.  For more information on the progress of the Fourth Amendments, visit (Chinese only): http://www.sipo.gov.cn/ztzl/ywzt/zlfjqssxzdscxg/.

The following table shows the differences between the existing law and proposed amendments:

Section # Current law in Chinese Current law in English Proposed Amendment in Chinese Proposed Amendment in English
46

专利复审委员会对宣告专利权无效的请求应当及时审查和作出决定,并通知请求人和专利权人。宣告专利权无效的决定,由国务院专利行政部门登记和公告。

对专利复审委员会宣告专利权无效或者维持专利权的决定不服的,可以自收到通知之日起三个月内向人民法院起诉。人民法院应当通知无效宣告请求程序的对方当事人作为第三人参加诉讼。

The patent review board shall examine the request for declaring a patent right invalid and make a decision in a timely manner and notify the requesting person and the patentee of its decision. The decision on declaring a patent right invalid shall be registered and announced by the patent administration department under the State Council.
A person that is dissatisfied with the patent review board's decision on declaring a patent right invalid or its decision on affirming the patent right may take legal action before a people's court, within three months from the date of receipt of the notification. The people's court shall notify the opposite party in the invalidation procedure to participate in the litigation as a third party.

专利复审委员会对宣告专利权无效的请求应当及时审查和作出决定,并通知请求人和专利权人。

宣告专利权无效或者维持专利权的决定作出后,国务院专利行政部门应当及时予以登记和公告。该决定自公告之日起生效。

对专利复审委员会宣告专利权无效或者维持专利权的决定不服的,可以自收到通知之日起三个月内向人民法院起诉。人民法院应当通知无效宣告请求程序的对方当事人作为第三人参加诉讼。

The patent review board shall examine the request for declaring a patent right invalid and make a decision in a timely manner and notify the requesting person and the patentee of its decision.

Once the decision on declaring a patent right invalid or affirming the validity of a patent is made, the patent administration department under the State Council shall register and publish it at once.  The effective date of the decision starts from the date of publication.
A person that is dissatisfied with the patent review board's decision on declaring a patent right invalid or its decision on affirming the patent right may take legal action before a people's court, within three months from the date of receipt of the notification. The people's court shall notify the opposite party in the invalidation procedure to participate in the litigation as a third party.

47 宣告无效的专利权视为自始即不存在。
  宣告专利权无效的决定,对在宣告专利权无效前人民法院作出并已执行的专利侵权的判决、调解书,已经履行或者强制执行的专利侵权纠纷处理决定,以及已经履行的专利实施许可合同和专利权转让合同,不具有追溯力。但是因专利权人的恶意给他人造成的损失,应当给予赔偿。
  依照前款规定不返还专利侵权赔偿金、专利使用费、专利权转让费,明显违反公平原则的,应当全部或者部分返还。
Any patent right that has been declared invalid shall be deemed to be non-existent from the beginning.
The decision on declaring a patent right invalid shall have no retroactive effect on any written judgment or written mediation on patent infringement that has been made and enforced by the people's court, or on any decision concerning the handling of a dispute over the patent infringement that has been performed or compulsively executed, or on any contract for permitted exploitation of the patent or for transfer of patent rights that has been performed--prior to the invalidation declaration of the patent right. However, compensation shall be made for the losses caused to another person mala fides by the patentee.
Where the patent infringement compensation, royalties, and patent right transfer fees are not refunded pursuant to the provisions of the preceding paragraph, which constitutes a blatant violation of the principle of fairness, refund shall be made fully or partly.
宣告无效的专利权视为自始即不存在。
  宣告专利权无效的决定,对在宣告专利权无效前人民法院作出并已执行的专利侵权的判决、调解书,已经履行或者强制执行的专利侵权纠纷处理、处罚决定,以及已经履行的专利实施许可合同和专利权转让合同,不具有追溯力。但是因专利权人的恶意给他人造成的损失,应当给予赔偿。
  依照前款规定不返还专利侵权赔偿金、专利使用费、专利权转让费,明显违反公平原则的,应当全部或者部分返还。
Any patent right that has been declared invalid shall be deemed to be non-existent from the beginning.
The decision on declaring a patent right invalid shall have no retroactive effect on any written judgment or written mediation on patent infringement that has been made and enforced by the people's court, or on any decision or penalty concerning the handling of a dispute over the patent infringement that has been performed or compulsively executed, or on any contract for permitted exploitation of the patent or for transfer of patent rights that has been performed--prior to the invalidation declaration of the patent right. However, compensation shall be made for the losses caused to another person mala fides by the patentee.
Where the patent infringement compensation, royalties, and patent right transfer fees are not refunded pursuant to the provisions of the preceding paragraph, which constitutes a blatant violation of the principle of fairness, refund shall be made fully or partly.
60 未经专利权人许可,实施其专利,即侵犯其专利权,引起纠纷的,由当事人协商解决;不愿协商或者协商不成的,专利权人或者利害关系人可以向人民法院起诉,也可以请求管理专利工作的部门处理。管理专利工作的部门处理时,认定侵权行为成立的,可以责令侵权人立即停止侵权行为,当事人不服的,可以自收到处理通知之日起十五日内依照《中华人民共和国行政诉讼法》向人民法院起诉;侵权人期满不起诉又不停止侵权行为的,管理专利工作的部门可以申请人民法院强制执行。进行处理的管理专利工作的部门应当事人的请求,可以就侵犯专利权的赔偿数额进行调解;调解不成的,当事人可以依照《中华人民共和国民事诉讼法》向人民法院起诉。 If a dispute arises as a result of exploitation of a patent without permission of the patentee, that is, the patent right of the patentee is infringed, the dispute shall be settled through consultation between the parties. If the parties are not willing to consult or if consultation fails, the patentee or interested party may take legal action before a people's court, and may also request the administration department for patent-related work to handle the dispute. If, when handling the dispute, the said department believes the infringement is established, it may order the infringer to cease the infringement immediately; if the infringer is dissatisfied with the order, he may, within 15 days from the date of receipt of the notification of the order, take legal action before a people's court in accordance with the Administrative Procedure Law of the People's Republic of China. If the infringer neither takes legal action at the expiration of the time limit nor ceases the infringement, the said department may file an application with the people's court for compulsory enforcement. The administration department for patent-related work that handles the call shall, upon request of the parties, carry out mediation concerning the amount of compensation for the patent right infringement. If mediation fails, the parties may take legal action before the people's court in accordance with the Civil Procedure Law of the People's Republic of China.

未经专利权人许可,实施其专利,即侵犯其专利权,引起纠纷的,由当事人协商解决;不愿协商或者协商不成的,专利权人或者利害关系人可以向人民法院起诉,也可以请求管理专利工作的部门处理

管理专利工作的部门处理时,认定侵权行为成立的,可以责令侵权人立即停止侵权行为、赔偿损失;当事人不服的,可以自收到处理通知之日起十五日内依照《中华人民共和国行政诉讼法》向人民法院起诉;侵权人期满不起诉又不停止侵权行为的,管理专利工作的部门可以申请人民法院强制执行。

对涉嫌扰乱市场秩序的专利侵权行为,管理专利工作的部门有权依法查处;在全国有重大影响的,由国务院专利行政部门组织查处。管理专利工作的部门认定侵权行为成立且扰乱市场秩序的,责令停止侵权行为,没收违法所得,并可没收、销毁侵权产品或者用于实施侵权行为的专用设备,并处违法所得四倍以下的罚款,没有违法所得或者违法所得难以计算的,可以处二十万元以下的罚款。

宣告专利权无效或者维持专利权的决定生效后,管理专利工作的部门和人民法院应当根据该决定及时审理、处理专利侵权纠纷。

If a dispute arises as a result of exploitation of a patent without permission of the patentee, that is, the patent right of the patentee is infringed, the dispute shall be settled through consultation between the parties. If the parties are not willing to consult or if consultation fails, the patentee or interested party may take legal action before a people's court, and may also request the administration department for patent-related work to handle the dispute. If, when handling the dispute, the said department believes the infringement is established, it may order the infringer to cease the infringement and to compensate for damages immediately; if the infringer is dissatisfied with the order, he may, within 15 days from the date of receipt of the notification of the order, take legal action before a people's court in accordance with the Administrative Procedure Law of the People's Republic of China. If the infringer neither takes legal action at the expiration of the time limit nor ceases the infringement, the said department may file an application with the people's court for compulsory enforcement.

The administrative department for patent-related work has the right according to the law to investigate and handle patent infringement activities that allegedly disturb market order.  For ones with national influence, the patent administrative department of the State Council shall investigate and handle.  Once the administrative department for patent-related work has determined that the infringement is established and disturbs the market order, said department shall order infringement to be ceased, seize unlawful gains, and seize or destroy infringing products or specific equipment used for infringement, and impose a fine of less than four times of the unlawful gains.  For instances of no unlawful gains or unlawful gains that are difficult to determine, a fine of less than 200,000 may be imposed.

Once the decision announcing the invalidity or validity of a patent becomes effective, the administrative department for patent-related work and the People’s Courts shall promptly adjudicate or process the patent infringement dispute based on the decision.

The administration department for patent-related work that handles the call shall, upon request of the parties, carry out mediation concerning the amount of compensation for the patent right infringement. If mediation fails, the parties may take legal action before the people's court in accordance with the Civil Procedure Law of the People's Republic of China.

61 专利侵权纠纷涉及新产品制造方法的发明专利的,制造同样产品的单位或者个人应当提供其产品制造方法不同于专利方法的证明。
  专利侵权纠纷涉及实用新型专利或者外观设计专利的,人民法院或者管理专利工作的部门可以要求专利权人或者利害关系人出具由国务院专利行政部门对相关实用新型或者外观设计进行检索、分析和评价后作出的专利权评价报告,作为审理、处理专利侵权纠纷的证据。
If a dispute over patent infringement involves an invention patent for the method of manufacturing a new product, the unit or individual manufacturing the same product shall provide evidence to show that the manufacturing method of their own product is different from the patented method.
If a dispute over patent infringement involves a utility model patent or a design patent, the people's court or the administration department for patent-related work may require the patentee or the interested parties to present a patent right assessment report prepared by the patent administration department under the State Council through searching, analyzing, and assessing the relevant utility model or design, which shall serve as evidence for trying or handling the patent infringement dispute.

专利侵权纠纷涉及新产品制造方法的发明专利的,制造同样产品的单位或者个人应当提供其产品制造方法不同于专利方法的证明。
  专利侵权纠纷涉及实用新型专利或者外观设计专利的,人民法院或者管理专利工作的部门可以要求专利权人或者利害关系人出具由国务院专利行政部门对相关实用新型或者外观设计进行检索、分析和评价后作出的专利权评价报告,作为审理、处理专利侵权纠纷的证据。

专利侵权诉讼中,对于由被控侵权人掌握的涉嫌侵权的产品以及账簿、资料等证据,人民法院应当根据原告或者其诉讼代理人的申请依法调查搜集。被控侵权人不提供或者转移、伪造、毁灭证据的,人民法院依法采取制止妨害民事诉讼的强制措施;构成犯罪的,依法追究刑事责任。

If a dispute over patent infringement involves an invention patent for the method of manufacturing a new product, the unit or individual manufacturing the same product shall provide evidence to show that the manufacturing method of their own product is different from the patented method.
If a dispute over patent infringement involves a utility model patent or a design patent, the people's court or the administration department for patent-related work may require the patentee or the interested parties to present a patent right assessment report prepared by the patent administration department under the State Council through searching, analyzing, and assessing the relevant utility model or design, which shall serve as evidence for trying or handling the patent infringement dispute.

During patent infringement litigation, based on the request from the plaintiff or its litigation agent, People’s Courts shall investigate and collect according to law evidence with respect to alleged infringing products and books, information or other evidence controlled by accused infringer.  If the accused infringer refuses to provide, or transfer, falsify, or destroy evidence, People’s Courts according to law take forceful actions against obstructing civil litigation.  For those that commit a crime, a criminal penalty according to law will be charged.

63 假冒专利的,除依法承担民事责任外,由管理专利工作的部门责令改正并予公告,没收违法所得,可以并处违法所得四倍以下的罚款;没有违法所得的,可以处二十万元以下的罚款;构成犯罪的,依法追究刑事责任。 A person who counterfeits the patent of another person shall, in addition to bearing civil liabilities in accordance with law, be ordered by the administration department for patent-related work to put it right, and the department shall make the matter known to the public, confiscate his unlawful gains and, in addition, impose on him a fine of not more than four times the unlawful gain; if there are no unlawful gains, a fine of not more than RMB 200,000 may be imposed on him; and if a crime is constituted, criminal responsibility shall be pursued in accordance with law. 假冒专利的,除依法承担民事责任外,由管理专利工作的部门责令改正并予公告,没收违法所得,可以并处违法所得四倍以下的罚款;没有违法所得或者违法所得难以计算的,可以处二十万元以下的罚款;构成犯罪的,依法追究刑事责任。 A person who counterfeits the patent of another person shall, in addition to bearing civil liabilities in accordance with law, be ordered by the administration department for patent-related work to put it right, and the department shall make the matter known to the public, confiscate his unlawful gains and, in addition, impose on him a fine of not more than four times the unlawful gain; if there are no unlawful gains or the unlawful gains are difficult to determine, a fine of not more than RMB 200,000 may be imposed on him; and if a crime is constituted, criminal responsibility shall be pursued in accordance with law.
64

管理专利工作的部门根据已经取得的证据,对涉嫌假冒专利行为进行查处时,可以询问有关当事人,调查与涉嫌违法行为有关的情况;对当事人涉嫌违法行为的场所实施现场检查;查阅、复制与涉嫌违法行为有关的合同、发票、账簿以及其他有关资料;检查与涉嫌违法行为有关的产品,对有证据证明是假冒专利的产品,可以查封或者扣押。

管理专利工作的部门依法行使前款规定的职权时,当事人应当予以协助、配合,不得拒绝、阻挠。

When the administration department for patent-related work investigates and handles the suspected counterfeiting of a patent, it may, based on evidence obtained, inquire the parties concerned, and investigate the circumstances related to the suspected illegal act; it may conduct on-the-spot inspection of the places where the suspected illegal act is committed; consult and duplicate the relevant contracts, invoices, account books and other related materials; and check the products related to the suspected illegal act and seal or detain the products that are proved to be produced by the counterfeited patent.
When the administration department for patent-related work performs its duties as prescribed in the preceding paragraph, the parties concerned shall provide assistance and cooperation, instead of refusing to do so or creating obstacles.

管理专利工作的部门根据已经取得的证据,对涉嫌侵犯专利权行为和假冒专利行为进行查处时,可以询问有关当事人,调查与涉嫌违法行为有关的情况;对当事人涉嫌违法行为的场所实施现场检查;查阅、复制与涉嫌违法行为有关的合同、发票、账簿以及其他有关资料;检查与涉嫌违法行为有关的产品,对有证据证明是侵权产品或者假冒专利的产品,可以查封或者扣押。

管理专利工作的部门依法行使前款规定的职权时,当事人应当予以协助、配合,不得拒绝、阻挠。被调查的当事人拒绝、阻挠管理专利工作的部门行使职权的,由管理专利工作的部门予以警告;情节严重的,依法给予治安管理处罚。

When the administration department for patent-related work investigates and handles the patent infringement and the suspected counterfeiting of a patent, it may, based on evidence obtained, inquire the parties concerned, and investigate the circumstances related to the suspected illegal act; it may conduct on-the-spot inspection of the places where the suspected illegal act is committed; consult and duplicate the relevant contracts, invoices, account books and other related materials; and check the products related to the suspected illegal act and seal or detain the products that are proved to be infringed products or produced by the counterfeited patent.

When the administration department for patent-related work performs its duties as prescribed in the preceding paragraph, the parties concerned shall provide assistance and cooperation, instead of refusing to do so or creating obstacles. 

If the party that is subjected to investigation refuses or obstructs the administrative department for patent-related work to perform its duties, the administrative department for patent-related work shall issue warnings.  For severe situations, the party shall be given the public security management punishment according to law.

65

侵犯专利权的赔偿数额按照权利人因被侵权所受到的实际损失确定;实际损失难以确定的,可以按照侵权人因侵权所获得的利益确定。权利人的损失或者侵权人获得的利益难以确定的,参照该专利许可使用费的倍数合理确定。赔偿数额还应当包括权利人为制止侵权行为所支付的合理开支。

    权利人的损失、侵权人获得的利益和专利许可使用费均难以确定的,人民法院可以根据专利权的类型、侵权行为的性质和情节等因素,确定给予一万元以上一百万元以下的赔偿。

The amount of compensation for patent right infringement shall be determined according to the patentee's actual losses caused by the infringement. If it is hard to determine the actual losses, the amount of compensation may be determined according to the benefits acquired by the infringer through the infringement. If it is hard to determine the losses of the patentee or the benefits acquired by the infringer, the amount of compensation may be determined according to the reasonably multiplied amount of the royalties of that patent. The amount of compensation shall include the reasonable expenses paid by the patentee for putting an end to the infringement.
If the losses of the patentee, benefits of the infringer, or royalties of the patent are all hard to determine, the people's court may, on the basis of the factors such as the type of patent right, nature of the infringement, and seriousness of the case, determine the amount of compensation within the range from 10,000 yuan to 1,000,000 yuan.

侵犯专利权的赔偿数额按照权利人因被侵权所受到的实际损失确定;实际损失难以确定的,可以按照侵权人因侵权所获得的利益确定。权利人的损失或者侵权人获得的利益难以确定的,参照该专利许可使用费的倍数合理确定。赔偿数额还应当包括权利人为制止侵权行为所支付的合理开支。

权利人的损失、侵权人获得的利益和专利许可使用费均难以确定的,管理专利工作的部门或者人民法院可以根据专利权的类型、侵权行为的性质和情节等因素,确定给予一万元以上一百万元以下的赔偿。

对于故意侵犯专利权的行为,管理专利工作的部门或者人民法院可以根据侵权行为的情节、规模、损害结果等因素,将根据前两款所确定的赔偿数额最高提高至三倍。

The amount of compensation for patent right infringement shall be determined according to the patentee's actual losses caused by the infringement. If it is hard to determine the actual losses, the amount of compensation may be determined according to the benefits acquired by the infringer through the infringement. If it is hard to determine the losses of the patentee or the benefits acquired by the infringer, the amount of compensation may be determined according to the reasonably multiplied amount of the royalties of that patent. The amount of compensation shall include the reasonable expenses paid by the patentee for putting an end to the infringement.

If the losses of the patentee, benefits of the infringer, or royalties of the patent are all hard to determine, the administrative department for patent-related work or the people's court may, on the basis of the factors such as the type of patent right, nature of the infringement, and seriousness of the case, determine the amount of compensation within the range from 10,000 yuan to 1,000,000 yuan.

For willful patent infringement, the administrative department for patent-related work or the people’s court may, based on circumstances and scale of infringement, result of the injury, or other factors, raise the damages to a maximum of three times of the damages determined according to previous two paragraphs.

Furthermore, SIPO has also proposed amendments to sections 11 and 13 of Chapter 2 and sections 8 and 11 of Chapter 3 of Part I of the Guidelines to Examination and is seeking comments.  The following table also shows the differences between the existing guidelines and the proposed amendments:

 

Guideline Section

Existing Guidelines in Chinese

Existing Guidelines in English

Proposed Changes in Chinese

Proposed Changes in English

第一部分第二章的第11节 (Part 1, Chapter 2, section 11)

根据专利法第二十二条第二款的审查:

初步审查中,审查员一般不通过检索来判断实用新型是否明显不具备新颖性。审查员可以根据未经其检索获得的有关现有技术或抵触申请的信息判断实用新型是否明显不具备新颖性。

但是,实用新型涉及非正常申请的,例如明显抄袭现有技术或者属于内容明显实质相同的专利申请重复提交,审查员应当根据检索获得的对比文件或者其他途径获得的信息判断实用新型是否明显不具备新颖性。

有关新颖性的审查参照本指南第二部分第三章的规定。

Examination in Accordance with Article 22.2

  In the preliminary examination, the examiner generally does not determine on search whether a utility model is obviously lack of novelty, but may determine on the information of related prior art or conflicting applications obtained not through search.

However, where an abnormal applications for utility model is involved, such as an application obviously plagiarizing prior art or repeated submission of an application with substantially identical content, the examiner shall judge whether the utility model is obviously lack of novelty depending on the reference document obtained through search or information obtained by other approaches.

With regard to the examination of novelty, the provisions of Chapter 3 of Part II of these Guidelines shall apply.

根据专利法第二十二条第二款的审查:

初步审查中,审查员一般不通过检索来判断实用新型是否明显不具备新颖性。审查员可以根据未经其检索获得的有关现有技术或抵触申请的信息判断实用新型是否明显不具备新颖性。

但是,实用新型涉及非正常申请的,例如明显抄袭现有技术或者属于内容明显实质相同的专利申请重复提交,审查员应当根据检索获得的对比文件或者其他途径获得的信息判断实用新型是否明显不具备新颖性。

有关新颖性的审查参照本指南第二部分第三章的规定。

Examination in Accordance with Article 22.2

  In the preliminary examination, the examiner generally does not determine on search whether a utility model is obviously lack of novelty, but may determine on the information of related prior art or conflicting applications obtained not through search.

However, where an abnormal applications for utility model is involved, such as an application obviously plagiarizing prior art or repeated submission of an application with substantially identical content, the examiner shall judge whether the utility model is obviously lack of novelty depending on the reference document obtained through search or information obtained by other approaches.

With regard to the examination of novelty, the provisions of Chapter 3 of Part II of these Guidelines shall apply.

第一部分第二章的第13节 (Part 1, Chapter 2, section 13)

根据专利法第九条的审查:

专利法第九条第一款规定,同样的发明创造只能授予一项专利权。专利法第九条第二款规定,两个以上的申请人分别就同样的发明创造申请专利的,专利权授予最先申请的人。

初步审查中,对于实用新型专利申请依照专利法第九条的规定是否能取得专利权,一般不通过检索进行审查。但审查员已经得知有申请人就同样的发明创造申请了专利的,应当进行审查。

对同样的发明创造的处理,参照本指南第二部分第三章第6节的规定。

Examination in Accordance with Article 9:

In accordance with Article 9.1, for any identical invention-creation, only one patent right shall be granted.  In accordance with Article 9.2, where two or more applicants file applications for patent for the identical invention-creation, the patent right shall be granted to the applicant whose application was filed first.

In the preliminary examination, whether or not a patent application for utility model may obtain a patent right according to Article 9 shall not be examined through search in general.  However, if the examiner knows that there is an applicant who has filed a patent application for the identical invention-creation, he shall conduct the examination.

With regard to the handling of identical inventions-creations, the provisions in Chapter 3, section 6, Part II of these Guidelines shall apply.

根据专利法第九条的审查:

专利法第九条第一款规定,同样的发明创造只能授予一项专利权。专利法第九条第二款规定,两个以上的申请人分别就同样的发明创造申请专利的,专利权授予最先申请的人。

初步审查中,对于实用新型专利申请依照专利法第九条的规定是否能取得专利权,一般不通过检索进行审查。但审查员已经得知有申请人就同样的发明创造申请了专利的,应当进行审查。

对同样的发明创造的处理,参照本指南第二部分第三章第6节的规定。

Examination in Accordance with Article 9:

In accordance with Article 9.1, for any identical invention-creation, only one patent right shall be granted.  In accordance with Article 9.2, where two or more applicants file applications for patent for the identical invention-creation, the patent right shall be granted to the applicant whose application was filed first.

In the preliminary examination, whether or not a patent application for utility model may obtain a patent right according to Article 9 shall not be examined through search in general.  However, if the examiner knows that there is an applicant who has filed a patent application for the identical invention-creation, he shall conduct the examination.

With regard to the handling of identical inventions-creations, the provisions in Chapter 3, section 6, Part II of these Guidelines shall apply.

第一部分第三章的第8节 (Part 1, Chapter 3, section 8)

根据专利法第二十三条第一款的审查:

在外观设计专利申请的初步审查中,通常不进行检索,审查员仅需要根据申请文件的内容及一般消费者的常识,判断所要求保护的外观设计专利申请是否明显不符合专利法第二十三条第一款的规定。

但是,审查员可以根据未经其检索获得的有关现有设计或抵触申请的信息判断外观设计是否明显不符合专利法第二十三条第一款的规定。

外观设计涉及非正常申请的,例如明显抄袭现有设计或者属于内容明显实质相同的专利申请,审查员应当根据检索获得的对比文件或者其他途径获得的信息判断外观设计是否明显不符合专利法第二十三条第一款的规定。

相同或者实质相同的审查参照本指南第四部分第五章的相关规定。

Examination According to Article 23.1

  During the preliminary examination, the examiner usually does not conduct search and normally judges whether the design application obviously does not meet the requirements of Article 23.1 only on the basis of the content of the application document and common sense of normal consumer.

  The examiner, however, may judge whether the design obviously does not meet the requirements of Article 23.1 on the basis of the information, which is not resulted from search, concerning prior design or conflicting application.

  When examining design relating to abnormal filing, among other things, obviously plagiarizing prior design or prior application with substantially identical content, the examiner shall judge whether the design obviously does not meet the requirements of Article 23.1 on the basis of prior design document resulted from search or information obtained through other channels.

  Examination regarding identical or substantially identical designs shall follow provisions in Chapter 5 of Part IV of these Guidelines.

根据专利法第二十三条第一款的审查:

在外观设计专利申请的初步审查中,通常不进行检索,审查员仅需要根据申请文件的内容及一般消费者的常识,判断所要求保护的外观设计专利申请是否明显不符合专利法第二十三条第一款的规定。但是,审查员可以根据未经其检索获得的有关现有设计或抵触申请的信息判断外观设计是否明显不符合专利法第二十三条第一款的规定。

外观设计涉及非正常申请的,例如明显抄袭现有设计或者属于内容明显实质相同的专利申请,审查员应当根据检索获得的对比文件或者其他途径获得的信息判断外观设计是否明显不符合专利法第二十三条第一款的规定。

相同或者实质相同的审查参照本指南第四部分第五章的相关规定。

Examination According to Article 23.1

  During the preliminary examination, the examiner usually does not conduct search and normally judges whether the design application obviously does not meet the requirements of Article 23.1 only on the basis of the content of the application document and common sense of normal consumer.  The examiner, however, may judge whether the design obviously does not meet the requirements of Article 23.1 on the basis of the information, which is not resulted from search, concerning prior design or conflicting application.

  When examining design relating to abnormal filing, among other things, obviously plagiarizing prior design or prior application with substantially identical content, the examiner shall judge whether the design obviously does not meet the requirements of Article 23.1 on the basis of prior design document resulted from search or information obtained through other channels.

  Examination regarding identical or substantially identical designs shall follow provisions in Chapter 5 of Part IV of these Guidelines.

第一部分第三章的第11节 (Part 1, Chapter 3, section 11)

根据专利法第九条的审查:

专利法第九条第一款规定,同样的发明创造只能授予一项专利权。专利法第九条第二款规定,两个以上的申请人分别就同样的发明创造申请专利的,专利权授予最先申请的人。

初步审查中,对于外观设计专利申请根据专利法第九条的规定是否能够取得专利权,一般不通过检索进行审查。但审查员已经得知有申请人就同样的外观设计提出了专利申请的,应当进行审查。

Examination According to Article 9

In accordance with Article 9.1, for any identical invention-creation, only one patent right shall be granted.  According to Article 9.2, where two or more applicants file applications for patent for the identical invention-creation, the patent right shall be granted to the applicant whose application was filed first.

During the preliminary examination of a patent application for design, the examiner normally does not take the initiative to search and examine as to whether or not a patent application for design can be granted the patent right according to the provisions of Article 9.  However, where the examiner knows that one or more applicants have filed patent applications for the identical design, the examination shall be conducted.

根据专利法第九条的审查:

专利法第九条第一款规定,同样的发明创造只能授予一项专利权。专利法第九条第二款规定,两个以上的申请人分别就同样的发明创造申请专利的,专利权授予最先申请的人。

初步审查中,对于外观设计专利申请根据专利法第九条的规定是否能够取得专利权,一般不通过检索进行审查。但审查员已经得知有申请人就同样的外观设计提出了专利申请的,应当进行审查。

Examination According to Article 9

In accordance with Article 9.1, for any identical invention-creation, only one patent right shall be granted.  According to Article 9.2, where two or more applicants file applications for patent for the identical invention-creation, the patent right shall be granted to the applicant whose application was filed first.

During the preliminary examination of a patent application for design, the examiner normally does not take the initiative to search and examine as to whether or not a patent application for design can be granted the patent right according to the provisions of Article 9.  However, where the examiner knows that one or more applicants have filed patent applications for the identical design, the examination shall be conducted.

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

[*Note: The author claims no rights to the English translation of the existing Chinese patent law.  The proposed amendments are author’s own work, and any errors thereof shall be author's and shall not be attributed to any portion of the original Chinese texts.]