Proposed Amendments to China's Patent Law

On January 4, 2019 the National People’s Congress of China (“NPC”) published a list of proposed amendments to China’s patent law. The last amendments to China’s patent law occurred in 2008. The public have been asked to provide comments by February 3, 2019.

The proposed amendments include:

Increased damages Firstly, in cases of wilful infringement, Courts will be able to increase the award of damages by up to 5 times the original amount. Secondly, the range for statutory damages will be increased from RMB10,000 - RMB1,000,000 to RMB100,000 - RMB5,000,000.

Damages calculation If a plaintiff is unable to provide evidence in support of a damages claim, the Courts will be able to order a defendant to provide the relevant information.  If the defendant does not comply with that order, the Courts will be able to award damages based on what the plaintiff has requested together with the evidence that the plaintiff has provided.

Patent administrative enforcement The CNIPA and local IP offices will have the power to seal infringement verdicts and to order the seizing of infringing products.

Internet Service Provider (“ISP”) liabilities A patentee will be able to request the ISP to delete, block or disconnect webpage links to infringing products following Court or Administrative decisions.  The ISP will be also be liable if it if it does not comply with the patentee’s request within a reasonable period.

Open licensing A patentee will be able to grant an open patent license by registering a declaration to that effect at the CNIPA.  The open licence must have standard terms and conditions for all licensees under the open licence, amongst other requirements. 

Domestic design patent priority A domestic design patent applicant will be able to claim priority for a second design patent from a first design patent application with the same subject matter filed within 6 months in China.

Extension of design patent term The term of a design patent will be extended from ten to fifteen years.

Abuse of patent rights A provision has been proposed that relates to the situation where a patentee abuses its patent right and (i) causes harm to the public interest (ii) causes harm to the lawful interests of others or (ii) impacts legitimate competition.

Compensation for terms of patents for innovative pharmaceutical inventions A provision has been added that the State Council may decide to extend the term of the relevant patent right provided that the innovative drug is applied for listing in China and abroad simultaneously. The extension period shall not exceed 5 years and the total remaining effective term of patent after said listing shall not exceed fourteen years.

Further analysis of the amendments and their potential impact will follow.