New Regulations for Patent Examinations in China
As part of the phase one trade agreement between China and the US, China drafted the 4th Amendment of the China Patent Law. This amendment took effect on 1st June 2021. There are three things that are the basis to practice patent prosecution in China: the law, the regulations and the guidelines. The final regulations and guidelines for patent examination were confirmed and brought into force on 20th January 2024.
In addition to the above, judicial interpretations also constitute the basis to practice litigation; these are the rules and tests summarised from actual cases and given to practitioners and lower court judges by the Supreme Court as the guidelines for their practice.
This report, presented by Insight IP in collaboration with IP March, high- lights the new and updated procedures for patent prosecution in China.
Compared to historical practice, the additions and updates lean towards a more lenient practice, a practice more welcome to prosecution by foreign parties in China. There are amended timelines and requirements for patent term extension and drug patent term adjustment. There is the introduction of incorporation by reference, patent right evaluation, open licensing and restoration of rights. Overall there is greater flexibility regarding deadlines and the possibility to amend mistakes or add extra information, there is also additional flexibility in the design patent practice.
As ever, patent prosecution in China differs to other jurisdictions and great attention should be paid to the specific process and requirements. A Chinese patent attorney and high quality translation remain the two strongest tools to achieve effective prosecution of a patent in China.
