"Patent Pending" Marking in China Starting on May 1, 2012

[Arthur Tan-Chi Yuan]

In less than 2 months, one can finally put the lettering "Patent Pending" on products, packaging, manuals or other materials that are subject to the protection of a pending Chinese patent application (either an invention patent, a utility model patent, or a design patent). The State Intellectual Property Office issued a new Patent Marking Identification Procedure[1] on March 12, 2012.  The table (PDF here) below is my unofficial translation of the new and existing Patent Marking Identification Procedures and shows notable marked-up changes between the two versions.  For the Chinese version of the comparison, click here.

In summary, notable changes are:

  1. Patent-pending marking is now allowed in China.  This is currently prohibited by the false advertising law.  Of course, one needs to adhere to the precise wording of this marking according to the new procedure.
  2. The local offices of SIPO will be responsible for supervising and managing compliance under the new procedure (see also article 3).  Currently, the local government is responsible (see article 6 of existing regulation).  There are 47 SIPO local offices across the provinces and many major cities. 

Of course, be sure to remember that the markings must be in Simplified CHINESE, not in English or Traditional Chinese, characters.

Thoughts:

  1. The new procedure does not mention specific consequences of false marking or markings on the products, packaging, materials, etc., after the Chinese patent have expired or are deemed invalid.  While there probably aren’t many Chinese patents filed in March 1992, thus expiring this March, there may be products in the Chinese market with patents that have been ruled invalid.  In addition, in order to maintain a Chinese patent, one needs to pay an annual maintenance fee.  Questions remain whether these products with invalid patent numbers or expired patent numbers for failure to pay the annuities will be subjected to this new procedure and or false advertising law.
  2. In the US, a product with a marking of expired patents is not a violation of the false marking provision under section 16(b)(1) of the America Invents Act (“AIA).  In addition, the AIA authorizes only the US government may sue under the false marking provision of the Patent Act (section 292(a) of 35 U.S.C.), but also provides relief for who suffered “a competitive injury” as a result of a violation (section 16(b)(2) of the AIA).  The AIA also incorporates the advantages of virtual marking (section 16(a) of the AIA).  Maybe China will follow suit in the area of false marking and virtual marking in the near future?
  3. Don’t be surprise if you see the patent pending wording in Chinese on fashion apparels and accessories in China starting May this year as Chinese design patents do protect ornamental designs on fashion apparels and accessories.

 

State Intellectual Property Office Order No. 63

State Intellectual Property Office Order No. 29

Title

Patent Identification Marking Procedures

Regulations on Patent Marking and Patent Number Notation Method

Publication date

March 8, 2012

May 30, 2003

Effective Date

May 1, 2012

July 1, 2003

Article 1

This Procedure is promulgated to standardize patent identification marking and maintain normal market economy order in accordance with the Patent Law of the People's Republic of China (hereinafter referred to as “patent law”) and the Implementing Regulations of the Patent Law of the People's Republic of China rules.

This Regulation is promulgated to standardize patent identification marking and maintain normal market economy order in accordance with Article 15 of the Patent Law and Rule 83 of the Implementing Regulations of the Patent Law.

Article 2

All patent marking identifications shall be marked in accordance with this procedure.

All patent identification and patent number shall be marked in accordance with this regulation.

Article 3

Patent management administrative authority of a given administrative area shall supervise and manage patent marking activities within the respective administrative area.

A patentee or a licensee receiving the right from the patentee to mark a patent shall mark patent identification on the patented product, products directly produced by the patented process, packaging of the patent product, or patented product’s manual or other materials during the validity of the patent after grant.

Article 4

A patentee or a licensee receiving the right from the patentee to mark a patent shall mark patent identification on the patented product, products directly produced by the patented process, packaging of the patent product, or patented product’s manual or other materials during the validity of the patent after grant.

Patent identification and patent number shall be marked with the following content:

 (1) Use Chinese to mark the different types of patent, such as a Chinese invention patent, Chinese utility model patent, Chinese design patent;

 (2) the patent number issued by the State intellectual property Office, wherein “ZL” stands for “patent”, the first and the second digits indicate the year of patent filing, the third digit indicates the patent type, and the fourth digit and thereafter indicate the serial number and computer check digit.

 

In addition to the above content, additional texts, graphics identifications can be added, but the additional texts, graphics identifications and marking shall not mislead the public.

Article 5

Marked patent identification shall be marked with the following content:

(1) Use Chinese to mark the different types of patent, such as a Chinese invention patent, Chinese utility model patent, Chinese design patent;

(2) the patent number issued by the State intellectual property Office.

In addition to the above content, additional texts, graphics identifications can be added, but the additional texts, graphics identifications and marking shall not mislead the public.

For products directly produced by the patented process, packaging of the patent product, or patented product’s manual or other materials, the patent marking identification shall be in Chinese on the product obtained by the patented process.

Article 6

For products directly produced by the patented process, packaging of the patent product, or patented product’s manual or other materials, the patent marking identification shall be in Chinese on the product obtained by the patented process.

Patent management administrative authority of a local government responsible shall supervise and manage activities of marking patent identifications and patent numbers within the respective administrative area.

Article 7

Before the grant of the patent, the patent mark identification, if any, on a product, on the product's packaging or on the product manuals and other materials shall be in Chinese indicating the type of patent applications and patent application number in China, including letters indicating “Patent applied; not granted yet”(专利申请,尚未授权).

Patent management administrative authority shall order a correction within a limited time if patent identifications or patent number markings do not comply with this regulation.

Patent management administrative authority shall impose punishments according to article 59 of the Patent Law for improper patent identifications or patent number markings that constitute an act of patent counterfeiting.

 

Article 8

Patent management administrative authority shall order a correction if patent marking identifications do not comply with provisions 5, 6 or 7 of the Procedure.

Patent management administrative authority shall impose punishments according to article 63 of the Patent Law for improper patent mark identifications that constitute an act of patent counterfeiting.

The State Intellectual Property Office shall be responsible for the interpretation of this Procedure.

Article 9

The State Intellectual Property Office shall be responsible for the interpretation of this Procedure.

This regulation shall come into force on July 1, 2003.

Article 10

This procedure shall come into force on May 1, 2012.  That State Intellectual Property Office Order No. 29 issued on May 30, 2003 entitled “Regulations on Patent Identification and Patent Number Marking Method” is repealed at the effective date of this Order.