In order to ensure the effective implementation of the newly revised Patent Law, further improve China’s patent protection system, and align with relevant international rules, the State Council issued the “Decision on Amending the Implementing Regulations of the Patent Law of the People’s Republic of China” on December 11, 2023. The revised “Implementing Regulations” has come into effect as from January 20, 2024. This revision involves significant changes and adjustments to the system, overall representing an important response to the needs of innovation entities and an optimization of the patent legal system.
The “Implementing Regulations of the Patent Law of the People’s Republic of China” was promulgated by Decree No. 306 of the State Council of the People’s Republic of China on June 15, 2001. It underwent its first revision based on the Decision of the State Council on Amending the Implementing Regulations of the Patent Law of the People’s Republic of China issued on December 28, 2002, and its second revision based on the Decision of the State Council on Amending the Implementing Regulations of the Patent Law of the People’s Republic of China issued on January 9, 2010. The current third revision is in accordance with the Decision of the State Council on Amending the Implementing Regulations of the Patent Law of the People’s Republic of China issued on December 11, 2023.
To assist you in better understanding the significant changes in the revised “Implementing Regulations of the Patent Law” and to better serve your needs regarding patent prosecution and protection, we have summarized and explained the relevant contents and procedures. We hereby introduce the new regulations concerning suspension of procedures, in conjunction with the related content from the newly revised “Guidelines for Patent Examination.”
What is Suspension of Procedures
Suspension of procedures refers to an action of the Patent Office to suspend the relevant procedures upon the request of a party concerned in a dispute over the ownership of right or under the request of the People’s Court when a dispute over the right to apply for a patent (or ownership of a patent right) is accepted by the local intellectual property administrative authority or the People’s Court, or when the People’s Court has ordered the adoption of measures of property preservation for the right to apply for a patent (or the patent right).
Requirements for Requesting Suspension
(1) Where a party concerned files the request of suspension, the dispute over the ownership of right to apply for a patent (or of a patent right) shall have been accepted by the local intellectual property administrative authority or by the People’s Court. Where assistance to enforce the adoption of measures of property preservation for the right to apply for a patent (or a patent right) is asked for by the People’s Court, the civil order for property preservation shall have been made; or
(2) the requester for suspension shall be either the party concerned in a dispute over the ownership of right or the People’s Court that has adopted the measures of property preservation for the right to apply for a patent (or a patent right).
Scope of Suspension：
(1) Suspending the procedures of preliminary examination, substantive examination, reexamination, the grant of patent right, and invalidation;
(2) Suspending the procedures of an application deemed to have been withdrawn, entitlement to patent deemed to have been abandoned, and termination of a patent due to failure to pay annual fee, etc; and
(3) Suspending the formalities to withdraw a patent application, to abandon a patent right, to make a change of the name of the applicant (or patentee), to transfer the right to apply for a patent (or a patent right), and to register the pledge of a patent right, etc.
*Notice: Where, the procedure of preparation for publication or announcement has started before the request for suspension is approved, the said procedure shall not be affected by the request for suspension.
Notification of Suspension
(1) Where the requirements for suspension of procedures are met, the Patent Office will issue a Notification of Decision on Request for Suspension or a Notification of Commencement of Preservation (depending on the specific reason for the suspension).
(2) For suspension due to assistance in execution of property preservation, where a patent in the invalidation procedure in involved, the flow management department of the Patent Office shall also notify the Patent Reexamination and Invalidation Department of the decision of enforcing the suspension, and the Patent Reexamination and Invalidation Department shall notify the parties concerned in the invalidation procedure.
I. Suspension Due to Dispute over Patent (Application) Right Ownership
Any party involving in a dispute over the ownership of the right to apply for a patent or a patent right, who has already applied for mediation with the administrative authority for patent affairs or instituted legal proceedings before the people’s court, may request the patent administration department under the State Council to suspend the relevant procedures.
- Formalities of Requesting Suspension:
(1) submit a request for suspension and specify the reasons;
(2) attach certifying documents, i.e., the original or a duplicate copy of the acceptance document with patent application number (or patent number) issued by the local intellectual property administrative authority or the People’s Court .
- Time Limit of Suspension:
the duration of the suspension shall generally not exceed one year;
if no decision is made within one year of the suspension and it is necessary to continue the suspension, the requester may request to extend the suspension before the expiration date of the suspension and meantime submit certifying document of reasons for not concluding the case issued by the authority accepting the dispute over the ownership of right. The suspension may be extended once, and the extension period shall not exceed six months.
- Cessation of Suspension Procedure:
if, within one year from the date when the request for suspension is filed, no decision is made on the dispute relating to the ownership of the right to apply for a patent, and the person who requested the suspension does not request an extension of the suspension, the Patent Office shall resume the suspended procedure on its own initiative;
for the patent application (or patent) which is still in the suspension period, after receiving an effective handling decision, document of mediation, ruling, or judgment that does not concern the change of the owner of the right, the Patent Office shall promptly cease the suspension; where it concerns the change of the owner of the right, the Patent Office shall cease the suspension after the necessary procedures for updating the bibliographic data are completed.
- Exceptions to Request for Suspension of Patent Invalidation Proceedings:
For patents involved in an invalidation procedure, after the formal examination is completed by the flow management department of the Patent Office, further examination is conducted by the Patent Invalidation Examination Department. The patent invalidation proceedings may not be suspended in the following circumstances:
(1) where a decision on the invalidation examination can be made based on the examination work already conducted;
(2) where the reasons presented by the parties involved in the ownership dispute are clearly insufficient and there is no sufficient evidence demonstrating the existence of an ownership dispute;
(3) where there is evidence indicating that the suspension of the patent invalidation proceedings would significantly harm the interests of the parties or public interests;
(4) where there is evidence indicating that the request for the suspension of procedures is clearly made in bad faith or involves improper conduct.
II. Suspension Due to Assistance in Execution of Property Preservation
Where, in hearing civil cases, the people’s court has ordered the adoption of preservation measures on the right to apply for a patent or a patent right, the patent administration department under the State Council shall suspend the relevant procedure concerning the patent application or patent under preservation on the date of receiving the judgment order and the notification on assisting the execution of the order indicated with the application number or the patent number. At the expiration of the time limit for preservation, if there is no order of the people’s court to continue the preservation, the patent administration department under the State Council shall resume the relevant procedure on its own initiative.
- Formalities of Requesting Suspension:
(1) the People’s Court shall serve the specified receiving department of the Patent Office with the civil order of property preservation of the right to apply for a patent (or a patent right) and the Notification on Assistance in Execution, and provide the address, postal code and name of the addressee of the People’s Court;
(2) the civil order and the Notification on Assistance in Execution shall indicate the information of the patent application or patent upon which the Patent Office is asked to assist the execution, such as the application number (or patent number), the title of the invention-creation, and the name of the applicant (or the patentee), as well as the property preservation period; and
(3) the patent application (or the patent) upon which assistance in execution of property preservation is asked for shall be valid.
- Time Limit of Suspension:
the duration of property preservation specified in the civil order and the Notification on Assistance in Execution;
where the People’s Court orders to continue adopting measures of property preservation, it shall serve the Patent Office with a Notification on Assistance in Execution for keeping on the preservation before the expiration of the time limit for suspension, and the suspension may be extended if the Notification on Assistance in Execution complies with the regulations after being checked.
- Cessation of Suspension Procedure:
(1) after the time limit for suspension expires, where there is no request of the people’s court to continue the preservation;
(2) where a notification of discharging preservation from the People’s Court which asked for assistance in execution of property preservation is received, and it is in conformity with relevant provisions after being checked.
III. Suspension Concerning Invalidation Procedure
Where, in the course of a patent infringement dispute, the alleged infringer requests invalidation of the patent and his request is accepted by the Patent Administration Department of the State Council, he may request the administrative authority for patent affairs to suspend the handling of the matter.
If the administrative authority for patent affairs considers that the reasons set forth by the alleged infringer for the suspension are obviously untenable, it may not suspend the handling of the matter.
The duration of suspension shall not exceed one year, and the Patent Office will resume the relevant procedures on its own initiative once the time limit of suspension expires.
IV. Suspension Circumstances and Open Licensing
Suspensions due to dispute over patent ownership and suspensions due to assistance in execution of property preservation can affect a patent holder’s ability to grant open licenses for their patents.