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China – New Measures for Archival Filing of Patent.

July 21, 2011

 

Following the recent amendments to the Chinese Patent Law and the Regulations for Implementing the Chinese Patent Law, the Measures for Archival Filing of Patent Licensing Agreements in China (the "Measures") have been amended accordingly and will become effective on August 1, 2011.

 

One significant change to the current Measures relates to licensing a patent owned by two or more individuals or entities. The amended Patent Law allows any of the co-owners of a patent to independently grant a non-exclusive license of the patent to a third party, absent any agreement between the coowners. To be consistent with the amended Patent Law, the new Measures no longer require consents from all owners when licensing a jointly owned patent under the same circumstances.

 

The new Measures also specify more circumstances under which archival filing of patent licensing agreements will not be granted, including where:

 

• the licensor is not the patentee shown on the Patent Register or does not have the right to license the patent;

 

• the licensing agreement does not include the content required by the new Measures;

 

• a joint owner of a patent enters into a licensing agreement in violation of laws and regulations or any agreement;

 

• the payment of the annuity of a patent is in the surcharge period;

 

• there is a dispute over the ownership of a patent, or a People's Court has taken a measure to preserve the right of a patent, and the relevant procedure regarding the patent right has been suspended;

 

• a patent has been pledged, unless the pledgee agrees; and

 

• there is a conflict with a licensing agreement that has been archivally filed.

 

Furthermore, a post-filing revocation proceeding has been introduced by the new Measures in case that a patent licensing agreement has been archivally filed, yet the State Intellectual Property Office ("SIPO") finds that the application did not meet the requirements of the new Measures and the defects have not been cured. SIPO will then revoke the filing and notify the applicant of the revocation.

 

Procedurally, the new Measures release local governmental organizations from handling archival filing of patent licensing agreements. SIPO will be responsible for processing the filings across the country.

 

In addition, the new Measures no longer require archival filing of a patent licensing agreement with SIPO to be a prerequisite for foreign exchange or archival filing of intellectual property right with customs.

 

 

By Peter Bullock and Clive Sedden

 

 

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