1. Clarify the form of patent application procedures and the effectiveness of converting paper documents into electronic documents (Part V, Chapter 1, Sections 2 and 2.2)

Clarify electronic form as a form of written form, and modify the writing order and content within the section. Add the provision that "the Patent Office shall scan and store the accepted paper patent application documents and other documents in the database. Patent application documents and other documents submitted in paper form shall be converted into electronic form by the Patent Office and recorded in the electronic system database, and have the same legal effect as the original paper form documents".

Revise interpretation

With the development of information technology, electronic form has become the main form of patent application. The amendment to Article 2 of the Implementing Regulations of the Patent Law clarifies that electronic form is considered as written form, and the examination guidelines have made adaptive modifications for this purpose. Due to the fact that application documents and other files submitted in paper form are usually scanned and converted into electronic form before entering a specific database for storage, the review guidelines clarify the effectiveness of converting paper form files into electronic form files.

2. Make general provisions on the supporting documents involved in patent application procedures (Part V, Chapter 1, Section 6)

The main modifications include: firstly, the cancellation of proof documents such as "non service invention certificate", "proof of habitual residence", "proof of habitual place of business", and "applicant qualification certificate". The second is to clarify that the supporting documents in electronic applications can be "electronic scanned copies of the original documents", and to clarify that "the applicant can file the original supporting documents with the patent office for record, and should indicate the filing number of the supporting documents when handling relevant procedures". The third provision stipulates that applicants (or patent owners) and other parties should follow the principle of good faith when handling various procedures, and clarifies that for patent applications (or patents) that violate the principle of good faith, the Patent Office will not approve the relevant procedures, and those that have been approved will be revoked.

Revise interpretation

According to the relevant requirements of the State Council to clean up certification matters, some certification documents in the patent approval process have been streamlined.

According to the Provisions on Electronic Patent Applications (Order No. 57 of the China National Intellectual Property Administration), it is clear that the supporting documents in electronic applications can be electronic scanning documents of paper originals. In addition, for those who have filed the original proof documents with the Patent Office, the filing number shall be indicated when handling the relevant procedures, which shall be deemed as the submission of the original proof documents to reduce the burden on the parties involved.

In order to implement the provisions of the Patent Law and its implementing regulations on the principle of good faith, it is clarified that parties should also follow the principle of good faith when handling various procedures.

3. Clarify the regulations for the representative of electronic applications (Chapter 1, Section 9 of Part V)

Supplementary requirements have been made to the provisions on "representative" in Section 4.1.5 of Chapter 1 of Part One of the Examination Guidelines, clarifying that if the applicant has two or more persons and has not appointed a patent agency, and submits patent application documents and other documents in electronic form, they should be submitted by the representative.

Revise interpretation

For electronic applications, if there are two or more applicants and no patent agency has been appointed, the representative shall act as the registered user, submit patent application documents and other documents, and be responsible for receiving notifications issued by the Patent Office in electronic form and handling related affairs.

1. Delete the relevant provisions on suspended fees (Part V, Chapter 2, Section 1)

Delete the suspended "patent registration fee" and "announcement printing fee".

Revise interpretation

According to the Notice of the Ministry of Finance and the National Development and Reform Commission on the Policies Concerning the Cessation, Exemption and Adjustment of Some Administrative Fees (CS [2018] No. 37) and the Announcement on the Cessation and Adjustment of Some Patent Fees (China National Intellectual Property Administration Announcement No. 272), the review guidelines have been modified adaptively to clarify that these two fees are no longer required to be paid when authorized.

2. Modify the payment and settlement methods for fees (Part 5, Chapter 2, Section 2)

If a party who does not have a habitual residence or place of business in mainland China uses foreign currency to pay fees to the Patent Office, they shall use the designated foreign currency and handle it through a patent agency, except as otherwise provided. It is clarified that "fees paid in foreign currency shall be settled at the exchange rate on the date when the bank settles the fee into the patent office account, and the settlement date shall be deemed as the payment date".

Revise interpretation

According to Article 18 of the Implementing Regulations of the Patent Law, which provides for exceptions to compulsory delegation, if a patent agency is entrusted to apply for patents and handle other patent affairs in China, the applicant or patentee may handle the payment of fees on their own. The corresponding provision that fees should be paid through patent agencies has been adaptively removed here. Foreign applicants who do not have a regular residence or place of business in China can handle payment services on their own.

In addition, all fees should be settled in Chinese yuan. Therefore, if the relevant parties use foreign currency to pay patent fees, the examination guidelines specify the settlement method and payment date for the parties using foreign currency to pay patent fees. It should be noted that when using foreign currency to make payments overseas, payment procedures should be completed in advance to avoid delays in payment deadlines due to exchange rate settlement and other reasons; The handling fees generated by paying in foreign currency should be calculated and excluded by oneself to avoid situations of insufficient payment.

3. Cases of increased fees and reduced payments (Part V, Chapter 2, Section 3)

It is explicitly stated that the annual fee during the implementation period of the open license can enjoy fee reduction, and it is also clarified that "those who handle the filing of the patent open license implementation contract shall be deemed to have made a request for annual fee reduction and do not need to handle the patent fee reduction filing procedures".

Revise interpretation

The review guidelines have added relevant provisions to provide preferential policies for reducing fees for patents during the implementation of open licensing, aiming to promote patent licensing transactions and improve patent conversion efficiency.

4. Add relevant regulations on policy refunds (Section 4.2.1 of Chapter 2 of Part V)

Add the provision that "if it complies with the relevant provisions of the announcements and notices issued by the development and reform department, finance department, and patent administration department of the State Council, the parties may request a refund. If it complies with the provisions, the Patent Office shall issue a refund"; Add the provision that "if a party voluntarily withdraws an invention patent application that has entered the substantive examination stage before the deadline for responding to the first examination opinion notice expires, they may request a refund of 50% of the substantive examination fee for the invention patent application, except for those who have already submitted their response opinions".

Revise interpretation

The relevant basis for policy based refunds has been clarified. In addition, according to the Notice of the Ministry of Finance and the National Development and Reform Commission on the Policies Concerning the Cessation, Exemption and Adjustment of Some Administrative Fees (CS [2018] No. 37) and the Announcement on the Cessation and Adjustment of Some Patent Fees (China National Intellectual Property Administration Announcement No. 272), the review guidelines have been modified adaptively to clarify the timing and conditions for requesting a refund of 50% of the substantive review fees for invention patent applications.

1. Revise the relevant provisions on the delivery date of notices and decisions (Part V, Chapter 6, Section 2)

For notices and decisions sent by mail, if the actual date of receipt is different from the presumed date of receipt by the parties, and it is specified that the parties can provide evidence to prove the actual date of receipt of the documents, the actual date of receipt shall prevail.

For notices and decisions delivered in electronic form, a provision is added stating that "the date of entry into the electronic system recognized by the parties shall be deemed as the date of delivery. When the date of entry into the electronic system recognized by the parties does not coincide with the date of issuance of the notice and decision, unless the parties can provide evidence, the date of issuance of the notice and decision shall be presumed as the date of delivery

Revise interpretation

For notices and decisions sent by mail, based on the principle of presumed delivery, it is further clarified that for situations where the actual date of receipt can be determined, that is, if the parties provide evidence to prove the actual date of receipt of the documents, the actual date of receipt shall prevail.

For notices and decisions delivered in electronic form, Article 4 of the Implementing Regulations of the Patent Law specifies that for various documents delivered in electronic form by the patent administrative department of the State Council, the date of entry into the electronic system recognized by the parties shall be the date of delivery. The review guidelines further stipulate that the date of issuance of the notice and decision shall be presumed as the date of service. If the date of entry into the electronic system recognized by the parties does not match the date of issuance of the notice and decision, the parties shall provide evidence to prove that the date of entry into the electronic system recognized by the parties is later than the date of issuance of the notice and decision, and the actual date of receipt shall be deemed as the date of service.

2. Amend the provisions on the starting date of the deadline (Part V, Chapter 7, Section 2.1, Item (2))

Change the starting date for all designated deadlines and some statutory deadlines from the "presumed receipt date" to the "delivery date".

Revise interpretation

Article 4 of the revised Implementing Regulations of the Patent Law stipulates that for various documents delivered in electronic form by the patent administrative department of the State Council, the date of entry into the electronic system recognized by the parties shall be deemed as the date of delivery. That is, for various documents sent in electronic form, the provision of "15 days from the date of sending the document, presumed to be the date of receipt of the document by the applicant" stipulated in the Provisions on Electronic Patent Applications (Order No. 57 of the China National Intellectual Property Administration) is cancelled. Therefore, if the original expression of "presumed receipt date" is used, the starting date of the period of electronic sending cannot be covered, the starting date of the said period is revised from "presumed receipt date" to "delivery date", which is more clear and accurate.

3. Amend the provisions on the suspension of relevant procedures (Chapter 7, Section 7 of Part V)

For the suspension request made by the parties involved in the ownership dispute in the invalidation procedure, the situations where the patent right invalidation procedure may not be suspended are detailed and listed.

Revise interpretation

This is a coordinated amendment made in accordance with Article 103 (2) of the Implementing Regulations of the Patent Law. In order to avoid the abuse of the suspension system in examination practice and to prevent improper interference with the normal examination procedure, the Patent Office may decide whether to suspend the suspension request made by the parties to the ownership dispute in the invalidation procedure based on the progress of the case trial, the evidence situation of the case, the principle of balancing public interests, emphasizing honesty and credibility, and cracking down on false litigation.

1. Clarify the circumstances in which patent agencies should be entrusted (Chapter 1, Section 6.1 of Part One, and Chapter 3, Section 2.2 of Part Five)

It is clarified that foreign applicants who do not have a regular residence or business office in mainland China should entrust patent agencies when applying for patents or handling other patent affairs separately, or when acting as representatives and jointly applying for patents or handling other patent affairs with others. This provision also applies to applicants from Hong Kong, Macau, and Taiwan who do not have a habitual residence or business office in mainland China and apply for patents or handle other patent affairs independently or as representatives. Failure to entrust a patent agency in accordance with this regulation constitutes a situation where patent applications are not accepted.

Revise interpretation

Detailed provisions have been made for the situations of compulsory delegation as stipulated in Article 18 of the Patent Law to meet the needs of examination practice.

2. Clarify the relevant provisions on confidentiality review (Chapter 5, Sections 3, 5, and 6 of Part V)

One is to clarify that the scope of confidential patent applications handled by the Patent Office involves national security or major interests that require confidentiality, except for national defense interests; Secondly, for applicants who have determined before submitting a confidentiality request that the content of their application involves national security or significant interests that need to be kept confidential, it should be clearly stated that they should submit "confidentiality certification materials issued by agencies or units with confidentiality authority", and the form requirements for confidentiality certification materials should be clarified; Thirdly, increase the process of receiving and processing decrypted national defense patents; The fourth is to clarify the time limit requirements for confidentiality examination of patent applications submitted to foreign countries.

Revise interpretation

Added the phrase 'excluding national defense interests' to provide a more accurate definition of confidential patent applications handled by the Patent Office.

Clarifying the issuing unit and relevant formal requirements for confidentiality request proof materials provides more standardized, accurate, and actionable guidance for the submission of confidentiality requests.

Further clarify the handover and processing workflow of the Patent Office and the National Defense Intellectual Property Office for decrypting national defense patents, in order to facilitate patent owners or the public to understand the relevant procedures.

In order to further implement the provision of the Administrative Licensing Law that administrative agencies must make administrative licensing decisions within the statutory time limit, Article 9 of the Implementing Regulations of the Patent Law further clarifies the specific time limit for issuing confidentiality examination notices to applicants and making confidentiality examination decisions. The examination guidelines have been revised in a coordinated manner, with time limits consistent with the Implementing Regulations of the Patent Law, to facilitate applicants' understanding of relevant time limits and provide more accurate time expectations for confidential examinations, meeting the need for timely patent application layout to foreign countries.

3. Improve the relevant regulations on delayed review (Chapter 7, Section 8 of Part V)

One is to add the provision that "requests for delayed examination of utility model patents shall be submitted by the applicant at the same time as submitting the utility model patent application. The delay period shall be one year from the effective date of the request for delayed examination".

The second provision regarding delayed examination of design shall be revised as follows: "The delay period shall be measured in months, and the longest delay period shall be 36 months from the effective date of the request for delayed examination

The third is to add a procedure for withdrawing requests for delayed examination, that is, "Before the expiration of the delay period, the applicant may request to withdraw the request for delayed examination. If it meets the requirements, the delay period will be terminated, and the patent application will be pending in order

Revise interpretation

Firstly, on the basis of the original invention and design patent applications that can request delayed examination, a provision has been added for utility model patent applications that can request delayed examination. Taking into account social opinions, the delay period for utility models is different from that for inventions, as there is no early public disclosure system similar to that for inventions, which is limited to one year. Secondly, for exterior design, in order to make the delay review regulations more flexible, the delay period is set on a monthly basis. Thirdly, in order to further meet the actual needs of innovative entities, provisions have been added to the delay examination requests for the three types of patent applications, which allow for the withdrawal of corresponding requests. This facilitates applicants to make timely adjustments based on changes in the actual situation and their own needs.

4. Clarify the relevant regulations for the publication of patent bulletins and tankobodies, and add some published items (Chapter 8, Sections 1.1, 1.2, and 1.3 of Part V)

One is to further clarify the publication cycle of patent bulletins and single volume editions, namely "the three types of patent bulletins are published separately according to the annual plan on a regular basis" and "patent applications and single volume editions are published on the same day as the corresponding patent bulletins on a regular basis".

The second is to add "compensation for patent term" and "open license for patent implementation" to the content of patent affairs published in the Invention Patent Bulletin; Add "open license for patent implementation" to the publication of patent affairs in utility model and design patent bulletins.

The third is the addition of items related to patent term compensation and drug patent term compensation disclosure in patent bulletins. Among them, the items announced for compensation of patent term include: main classification number, patent number, application date, authorization announcement date, original patent term expiration date, and current patent term expiration date. The items for compensating for the expiration of drug patent rights include not only the items for compensating for the expiration of patent rights, but also the "drug name and approved indications".

Revise interpretation

With the advancement of technology, it is now possible to publish multiple issues of patent bulletins per week. In order to adjust the publishing cycle more flexibly and better meet actual needs, the corresponding wording in the examination guidelines has been modified to "publish separately according to the annual plan" in the patent bulletin.

Article 107 of the Implementing Regulations of the Patent Law has added the ninth item "Compensation for Patent Term" and the thirteenth item "Open License Matters for Patent Implementation" to the content of the Patent Gazette. The examination guidelines have been adaptively modified to facilitate the public's understanding of information related to patent term compensation and open license for patent implementation.

5. Optimize the procedures for replacing and correcting patent certificates (Chapter 9, Sections 1.2.2 and 1.2.3 of Part V)

Delete the original provision "If the patent certificate is damaged, the patentee may request a replacement of the patent certificate" and clarify it as "If the original paper patent certificate issued by the Patent Office is damaged, the patentee may request a replacement of the patent certificate. The Patent Office may remake an electronic patent certificate and send it to the party concerned, and the replaced certificate shall be consistent with the content of the original patent certificate

It has been clarified that when there are errors in the patent certificate, the patentee may request the Patent Office to correct them. If the Patent Office verifies that there are errors, the original patent certificate will be invalidated and a corrected patent certificate will be issued.

Revise interpretation

According to the Announcement on Fully Implementing the Electronization of Patent Certificates (Announcement No. 515 of the China National Intellectual Property Administration), from February 7, 2023 (inclusive), fully implementing the electronization of patent certificates. For those who apply for and obtain patent authorization in paper form, electronic patent certificates will also be issued. If the original paper patent certificate issued by the Patent Office is damaged or broken, the patentee may request a replacement of the patent certificate. The Patent Office can remake the electronic patent certificate and send it to the parties involved.

When there are errors in the patent certificate, the patentee can request the Patent Office to correct them. If the Patent Office verifies that there are errors, a corrected patent certificate will be reissued, and the reissue of the certificate does not require the parties to pay any handling fees. In order for the public to obtain timely information on the replacement of patent certificates, a notice declaring the invalidation of the original patent certificate has been added to the patent bulletin.

A patent certificate only records the legal status of the patent right at the time of registration. The legal status of the patent right recorded in the patent registration book is more timely and effective. The applicant can request a copy of the patent registration book from the patent office as needed to obtain the latest legal status and related information of the patent.

1. Make specific provisions on the patent open license system (Chapter 11 of Part V)

Articles 50 to 52 of the Patent Law provide institutional provisions for the implementation of patent open licensing in China, while Articles 85 to 88 of the Implementing Regulations of the Patent Law provide detailed provisions. The examination guidelines have been revised in a coordinated manner, with the addition of a new chapter 11 in the fifth part, which further elaborates on the implementation of the patent open license system, including section 1 "Introduction", section 2 "Principles related to open licenses", section 3 "Proposal of patent open license statements", section 4 "Withdrawal of patent open license statements", section 5 "Registration and announcement of patent open licenses", section 6 "Effectiveness of patent open license implementation contracts", section 7 "Filing of patent open license implementation contracts", section 8 "Handling of fee reduction procedures during the implementation of patent open licenses", and section 9 "Handling of procedures related to patents that have already implemented open licenses".

Revise interpretation

The introduction section of Section 1 clarifies the basis for the formulation of this chapter and briefly outlines the operational mode of the patent open license system. It has been clarified that patent open licensing is a voluntary act of the patentee, and the geographical scope of implementing patent open licensing is clearly defined as within the territory of China.

Section 2 clarifies the purpose of establishing a patent open license system and proposes three principles that should be followed in patent open license related procedures: voluntary principle, legal principle, and disclosure principle.

Section 3 elaborates on the relevant provisions of the Patent Law and its implementing regulations, and provides specific provisions for the proposal of open license statements, including: the object of the patent open license statement, the qualifications of the requester, the content and requirements of the patent open license statement, the circumstances in which it is allowed or not to be announced, and the effective time of the patent open license statement.

Patents that implement open licensing should be valid and have high stability. Therefore, the examination guidelines specify that the object of the patent open licensing statement is "invention patents, utility model patents, or design patents that have been authorized and published".

In order to safeguard the legitimate rights and interests of the licensee, according to the implementation rules of the Patent Law, the requirements are further refined, which stipulate that in nine situations, such as when the patent right has been terminated or the patent right has been declared completely invalid, the patentee shall not grant an open license to their patent.

In order to avoid disputes among patent owners, the examination guidelines stipulate that if co owners make an open license statement regarding their joint patent rights, they should submit proof of consent from all co owners.

Regarding the patent open license declaration, according to the relevant provisions of the Implementing Regulations of the Patent Law, the procedural documents and content requirements for the requester to submit the patent open license declaration have been refined. It is clearly stipulated that if the patentee declares the implementation of the open license, necessary contact information should be provided to ensure that the licensee notifies the patentee in writing and pays the licensing fee. In addition, usage fees are the key core of whether open licensing can be achieved and an important factor affecting the effectiveness of the open licensing system. In order to guide patent owners to make reasonable open license statements and better achieve the original intention of the system, the examination guidelines clarify that when patent owners make patent open license statements, they should submit a brief explanation of the calculation basis and method of license fees, and limit the upper limit of open license fees.

The patent open license statement is based on the voluntary principle of the patentee, and once published, it should have relative stability and reasonable predictability of the content. In order to guide patent owners correctly, Section 4 standardizes the procedures, content requirements, and effective time for revoking open license statements.

Section 5 specifies that matters related to the patent open license statement shall be registered in the patent register and published in the patent gazette, and provisions shall be made for the patent open license statement and its withdrawal of the published items.

The patent open licensing system in our country adopts the offer model. Section 6 specifies the conditions for the effectiveness of patent open license implementation contracts. Unless otherwise provided by relevant laws and administrative regulations, if the patentee is notified in writing that they are willing to implement their open license patent and pay the licensing fee in accordance with the announcement, the patent open license implementation contract shall come into effect. If the patent holder who implements open licensing belongs to a mainland Chinese unit or individual and exports technology through open licensing, it shall comply with the requirements of relevant regulations such as the "Regulations on the Administration of Technology Import and Export of the People's Republic of China" and the "Measures for the Registration and Administration of Technology Import and Export Contracts".

Patent open license is a special form of ordinary license. Section 7 stipulates that the procedures for filing patent open license implementation contracts shall be carried out in accordance with the "Measures for Filing Patent Implementation License Contracts".

Section 8 provides detailed regulations on the handling of fee reduction procedures during the implementation of patent open licenses. If the patent open license implementation contract is approved for filing, the patentee may, during the period of patent open license implementation, enjoy the reduction of patent annual fees that have not yet expired from the date of filing according to regulations. In addition, if the patent owner and the licensee who implement an open license sign a general license contract after negotiating the license usage fee, it does not belong to an open license and therefore cannot enjoy the reduction of patent annual fees during the implementation of the patent open license. For patent holders who meet both the conditions for reducing patent annual fees, such as meeting both the conditions for reducing annual fees for ten years from the year of granting the patent right and the conditions for reducing annual fees during the implementation period of the open license, the higher of the two conditions shall be applied for reduction.

In order to standardize patent open licensing behavior and protect the legitimate rights and interests of licensees and stakeholders, Section 9 stipulates that before handling the two procedures of requesting changes in bibliographic data and waiving patent rights due to patent transfer, the patentee shall first withdraw the open licensing declaration. In addition, according to the relevant provisions of the Civil Code, in order to protect the legitimate rights and interests of the pledgee, the patentee shall obtain the consent of the pledgee when pledging the patent right that implements an open license.

2. Improve the relevant regulations on patent evaluation reports (Chapter 10, Sections 1, 2, 4, and 6.2 of Part V)

Make adaptive modifications to the relevant provisions of the patent evaluation report in accordance with the Patent Law and its implementing regulations. One is to adjust the subject, object, timing, and examination period of the patent evaluation report; The second is to modify the content of the commission procedures, patent evaluation, and correction requests.

Revise interpretation

The patent evaluation report system has played an important role in compensating for the low stability of utility model and design patent rights, and has received increasing attention from innovative entities. It has also raised more demands for expanding the scope of their requesting entities and advancing the timing of their requests. The amendment of the Patent Law and its implementing regulations conforms to this demand, expanding the requesting subject from the patentee and interested parties to the patentee, interested parties, and accused infringer. The examination guidelines, while adapting to the modifications of the Patent Law and its implementing regulations, further clarify that units or individuals who receive lawyer letters, e-commerce platform complaint notices, etc. issued by patent owners are accused infringers.

In order to obtain the patent evaluation report as soon as possible and determine the stability of the relevant patent rights, the Implementing Regulations of the Patent Law revised the time when the patentee requests to make the patent evaluation report from the time when the authorization decision is announced to the time when the patent registration formalities can be handled in advance. Therefore, the review guidelines made adaptive modifications to the time and object of requesting to make the patent evaluation report, and clarified that if the applicant requests to make the patent evaluation report when handling the patent registration formalities and the form review is qualified, the China National Intellectual Property Administration should make the patent evaluation report within two months from the date of the authorization announcement.

Due to the expansion of the scope of the subject of the patent evaluation report request, the relevant provisions of the commission procedures have been adjusted. It is clarified that if the requester entrusts a patent agency to handle it, a patent agency power of attorney must be submitted, and it must be stated that only matters related to the patent evaluation report will be handled; If the applicant or patentee entrusts the original agency to handle the procedures for the patent evaluation report, there is no need to submit a new patent agency power of attorney as the delegation relationship already exists.

Article 50 and Article 69 of the Implementing Regulations of the Patent Law respectively use Article 11 of the Implementing Regulations of the Patent Law as the scope of preliminary examination and the reason for invalidation request. Therefore, the content of patent right evaluation is adaptively increased to include whether the utility model or design complies with the provisions of Article 11 of the Implementing Regulations of the Patent Law, and its evaluation criteria are subject to the "Provisions on Regulating Patent Application Behavior".

It should be noted that for the same patent, the China National Intellectual Property Administration only made one patent evaluation report. For non patent owners who request a patent evaluation report, the patent owner will be informed of the issuance of the patent evaluation report, and the patent owner will also be given the opportunity to request a correction of the patent evaluation report.

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