CHINA Law and Practice Contributed by: Chuanhong Long, Huiqing Wang, Yingying Shen and Fan Li, CCPIT Patent and Trademark Law Office
patent agency to file and prosecute patent applica- tions. 1.3 Scope, Term and Maintenance of Patent Rights Exclusive Rights Conferred by a Patent A granted patent confers the exclusive right to prevent others from making, using, selling, offering for sale or importing the patented product, or using the patented process without the authorisation of the patentee. Term of Protection The standard term of patent protection is 20 years for invention patent, and ten years for utility model patent, Annuities are mandatory to keep a patent right in force. The annuity needs to be paid annually before the filing date anniversary. If the annuity is not paid by the due date, a six-month grace period applies during which a surcharge shall be paid. If the annuity remains unpaid after the grace period, a notification of termination will be issued. The patent right may be restored within two months from the date of that notification by filing a restoration request and paying the overdue fees and restoration fee. Failure to act within this period results in permanent termination. Patent Term Extensions Patent term adjustment (PTA) is available for an inven- tion patent that is granted after four years from the date of filing and after three years from the date of requesting substantive examination. all counted from the CN filing date. Maintenance Fees and Remedies Patent term extension (PTE) is available for a new drug-related patent to compensate for the time taken for review and approval of new drugs for marketing. The compensation term may not be more than five years, and the total patent term shall not exceed 14 years from the date of marketing approval. 1.4 Ownership, Assignment and Licensing Patent Ownership Eligibility Any entity or individual can apply for a patent. The patent right is owned by the applicant. The inventor,
as applicant, is entitled to apply for and own patents for non-service inventions. Service Inventions An invention made in the course of performing the employee’s job duties, or primarily using the employ- er’s resources, is deemed a service invention. For such inventions, the right to apply for a patent belongs to the employer. Once granted, the employer shall be the patentee. Service Inventions Made at Universities There are no special rules for inventions made at uni- versities or educational institutions. Assignments and Licences The recordal of assignments and licences is not man- datory. • requirement for assignment recordal – an assign- ment executed by both assignor and assignee, and a power of attorney from assignee; and • requirement for licence recordal – a licence agree- ment (or notarised copy) with a Chinese transla- tion, business certificates of both parties, powers of attorney from both parties, and – if recorded beyond three months from the effective date – a joint declaration confirming the continued validity of the agreement. To be effective against third parties, both assignments and licences should be registered with the CNIPA. After recordal, both the assignment and licence are published in the patent gazette. 1.5 Patent Infringement and Defences Under Chinese law, direct patent infringement gen- erally includes, without authorisation, manufacturing, using, offering to sell, selling, or importing a patented product, or using a patented process and exploiting products directly obtained from that process. The scope of patent protection is determined primarily by the claims, as construed in light of the description and drawings. Infringement analysis applies the all- elements rule; the doctrine of equivalents may also apply where the accused feature uses substantially the same means, performs substantially the same func- tion, achieves substantially the same result, and would
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