CHInA
tHE PAtEnt LAW sIGnIfICAntLY CHAnGEs
tHE PAtEntABILItY stAnDARD foR DEsIGns
design. Th is would have been dangerous if passed, as it leaves little room for Besides the changes to design patents, the new law prescribes that the
patent owners and attorneys in future litigation to interpret the protection direct source and the original source of the genetic resource shall be
scope of the design. Fortunately, although this regulation is still present in indicated in a patent application. If the applicant cannot provide original
Guidelines of Examination, according to examiners, in practice, it is unlikely source, it must give reasons. Th is provision is designed to protect China’s
that they will impose strict requirements on how this should be draft ed.
genetic resources. Furthermore, the law prescribes that if an invention
relies on certain genetic resources that were acquired or used illegally, the
Th e Patent Law also signifi cantly changes the patentability standard for
patent application will be rejected or, if granted, will be invalidated. It is
designs. Firstly, an ‘absolute novelty’ standard is adopted. Secondly, the
worth noting that disclosing genetic sources is not part of the suffi ciency
concept of confl icting applications now extends to design patents. In
requirement for a valid patent. Instead, the Implementing Regulations
addition, an inventive step-like standard is added, which prescribes that a
prescribed that applicants will complete forms, which are not part of the
design application should be diff erent from a prior design or combination
original disclosure.
of features in a prior design.
Th e new Patent Law abandoned the so-called ‘fi rst fi ling requirement’,
Th e Guidelines for Examination are supposed to outline how the patentability
which means for inventions made in China, it is no longer necessary to
standard for design is practised. However, since the Implementing
fi le the fi rst patent application in the country. However, for multinational
Regulations were not fi nalised in 2009, only the previous Guidelines for
companies that have operations in China, this does not necessarily mean
Examination could be used. In a draft version of the guidelines, extensive
more fl exibility. According to the law, although the applicant could choose
changes were made to the relevant section. However, as there was a gap to fi rst fi le outside of China, it must disclose its technical solution to the
between the eff ectiveness of the Patent Law and that of the guidelines, it will SIPO for security examination before fi ling overseas. In addition, the new
be interesting to follow any litigation over the validity of a design patent fi led law says that if an applicant violates this provision, it will not get a Chinese
before the guidelines took eff ect. patent. Th is will also be a ground for invalidation.
www.worldipreview.com World Intellectual Property Review Digest 2009 51
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100 |
Page 101 |
Page 102 |
Page 103 |
Page 104 |
Page 105 |
Page 106 |
Page 107 |
Page 108 |
Page 109 |
Page 110 |
Page 111 |
Page 112 |
Page 113 |
Page 114 |
Page 115 |
Page 116 |
Page 117 |
Page 118 |
Page 119 |
Page 120 |
Page 121 |
Page 122 |
Page 123 |
Page 124 |
Page 125 |
Page 126 |
Page 127 |
Page 128 |
Page 129 |
Page 130 |
Page 131 |
Page 132 |
Page 133 |
Page 134 |
Page 135 |
Page 136 |
Page 137 |
Page 138 |
Page 139 |
Page 140 |
Page 141 |
Page 142 |
Page 143 |
Page 144 |
Page 145 |
Page 146 |
Page 147 |
Page 148 |
Page 149 |
Page 150 |
Page 151 |
Page 152 |
Page 153 |
Page 154 |
Page 155 |
Page 156 |
Page 157 |
Page 158 |
Page 159 |
Page 160 |
Page 161 |
Page 162 |
Page 163 |
Page 164 |
Page 165 |
Page 166 |
Page 167 |
Page 168 |
Page 169 |
Page 170 |
Page 171 |
Page 172 |
Page 173