UPDATE

After more than two years of revisions, the amendments by the China National Intellectual Property Administration (CNIPA) to the implementing regulations for patents, utility models and designs in China came into force on 20 January 2024.

The new regulations – covering the Rules for the Implementation of the Patent Law and the Guidelines for Patent Examination – aim not only to protect and support innovation and intellectual property rights, but also to bring closer alignment and integration with international jurisdictions and treaties, such as the Patent Cooperation Treaty (PCT) and the Hague Agreement.

We outline below the main changes introduced.

Abolition of 15-day rule

The 15-day mailing period, which was added to the date of dispatch of any official communication from CNIPA, is abolished, substantially for all deadlines, for all applications filed in electronic form.

Restoration of Priority Right

In order to better integrate with the PCT system, the new implementing regulations of the Patent Act establish a 2-month priority grace period, after the end of 12-month period, for invention patents and utility models. That is to say, the priority declaration period for inventions and utility models has been extended from 12 months to 14 months, provided that a justifiable reason can be provided.

Addition or correction of priority claim

The new regulations allow the addition or correction of a priority claim after the filing of the Chinese application; the request must be made within 4 months from the filing of the application or 16 months from the filing date of the earlier application, whichever expires later.
This provision does not apply to designs.

Substantive Examination

The examination of design, invention paten and utility model applications will be conducted by CNIPA with greater severity; therefore, an increase in official actions and application rejections is expected.
Drawings attached to patent applications will be allowed to be in color, while the word count for the patent title will increase from 40 to 60 words.

Incorporation by reference

In case of missing or incorrectly filed parts of specification or claims of a Chinese invention/utility model application, if the latter claims from an earlier filed application, the missing or incorrectly filed parts may be filed within two months from the filing date by incorporation by reference of the earlier filed application.

Domestic Priority Claim

It is possible for Chinese design applications to claim priority from earlier Chinese invention/utility model patent applications, based on the drawings of the earlier Chinese invention/utility model patent applications.

Registered Designs

Partial designs that do not define the product with certainty or that are only designs of patterns or combinations of patterns and colors of the surface of the product shall not be registered.
If the initial design application is a design for an entire product, a divisional application based on a part of the entire product shall not be allowed. If the initial design application is a partial design application, a divisional application based on the whole product or other parts of the product shall not be allowed.

Deferral of Examination

It is possible to request deferral of examination of invention patents by 1, 2 or 3 years, utility models by 1 year and designs by months up to 36 months.
The applicant can withdraw the request for deferral before the expiration of the delay period.

Economic rights of the inventor

The inventor's remuneration is increased to a minimum of 4,000 RMB for an invention patent and 1,500 RMB for a design or a utility model.

Extension of patent protection

Where time compensation is granted on the duration of the patent, the number of days to be compensated is calculated on the date of grant minus 4 years from the filing date or 3 years from the date of request for substantive examination (whichever is later), minus the number of days of reasonable delay and unreasonable delay caused by the applicant.
Reasonable delays are defined as:

1. reexamination procedure in which the patent is granted after amendments made to application documents;
2. suspension procedure;
3. preservation measures;
4. other reasonable situations including, for example, administrative litigation.

Unreasonable delays caused by the applicant are defined as:

1. extensions of time limits for responses;
2. deferred examination requested by the applicant;
3. delays caused by incorporation;
4. delays caused by reinstatement;
5. early entry into the Chinese national phase without requesting early examination.

In case of pharmaceutical patents, the term extension is calculated by deducting 5 years from the interval between the filing date of the patent application and the date of the drug licence.

Software Protection

If an algorithm that has a specific technical relationship to the internal structure of the computer system achieves an improvement in the internal performance of the computer system, that algorithm must be taken into account in the evaluation of inventiveness.
If a solution can bring about an improvement in the user experience, and this improvement is achieved by technical features, or by technical features and features of the algorithm or business rules and features of the method supporting each other and interacting with each other, this improvement in the user experience shall be taken into account in the evaluation of inventiveness.
Artificial intelligence and big data algorithms may be admissible arguments if the algorithm has a specific technical relationship to the internal structure of the computer system and can solve the technical problem of how to improve the computing efficiency of the hardware or the execution results.