Patent Law

The final section of a four-week series appeared in ChinaBio Today on January 31, 2008. The article was prepared by Charles C. Liu, PhD, JD, Partner, Director of US Practice, Unitalen Attorneys at Law, and Jeanne J. Liu. It was originally published in China Intellectual Property, 20:44-51 (2007).

The fourth section states, in part:

INTRODUCTION

The Chinese Patent Law, since its enactment on March 12, 1984 (effective April 1, 1985) was previously revised on September 4, 1992 (effective January 1, 1993) and on August 25, 2000 (effective July 1, 2001). The draft of the third revision of the Patent Law (?Patent Law (Draft Revision 2006)?) is expected to be finalized in 2008 after the current 2000 version has been effective for eight years.

The draft of the third revision was released for comments on July 31, 2006 by the State Intellectual Property Office (?SIPO?) and was further revised and submitted as a draft for review to the Judicial Committee of the State Council on December 27, 2006. It should be pointed out that the SIPO released its revised administrative guidelines, i.e., the Patent Examination Guidelines (?Examination Guidelines (Revised 2006)?) on July 1, 2006. Also, a revision of the Implementing Rules of the Patent Law (?Patent Rules?) is expected to follow this revision of the Patent Law. Task forces were set up earlier this year to conduct research and to prepare an initial draft for the third revision of the Patent Rules.

PATENT MISUSE AND UNFAITHFUL PROCEEDINGS

To protect the legitimate interests of the public, the Patent Law (Draft Revision 2006) adopts provisions on prior art defense and malicious prosecution. For the prior art defense, the draft states that in a judicial or administrative proceeding for patent infringement if the defendant can forward sufficient evidence showing that the patented subject matter falls within the scope of the prior art, the defendant?s conduct shall be held as not constituting infringement.

The draft further provides that where a patent owner knew that his patented art belongs to a prior art, but nevertheless unfaithfully brought an action against another party in an administrative or judicial proceeding for patent infringement, the patent owner will be held liable to the alleged infringer for damages caused by the unfaithful accusation.

Addressing the issue of unfaithful proceedings, the draft also provides that if a patent owner, through his conduct, expression or silence, caused another party who practices the patented invention to reasonably believe that the patent owner was not and would not claim the patent rights, but the patent owner later brought an action against the other party before a court or patent administration, the patent owner?s claim will be deemed as against the principle of faithfulness and honesty. Thus, the patent owner will be held to have no right for compensation for the period prior to the date of the action and not have the right to ask the court or patent administration to order the other party to cease practicing the invention.

Access the four-part series here.