The Patent Law insists that a special patent agency designated by the State IP Office (SIPO) deals with foreign patent matters, ensuring quality for both inbound and outbound applications. The proposed revision removes this requirement and allows all patent agencies to handle foreign-related patent matters. Outbound patent applications no longer have to employ a patent agency. This means that Chinese individuals and companies can handle patent applications filed in other countries by themselves.

First filing strategies

The Patent Law states that a Chinese group or individual should file any invention created in China firstly with SIPO. Unless a national secret is disclosed, however, the Patent Law does not punish those who violate the regulations. In practice, some foreign companies sign agreements with their Chinese subsidiaries before the inventions have been completed. The product of the innovations then belong to their foreign parent companies even though Chinese subsidiaries created them. To counter this, the proposed revision to the Patent Law adopts regulations similar to those of other countries like the US and Germany. According to the proposed revision, if an individual or group, Chinese or foreign, wants to file a Chinese invention in a foreign country, they must first obtain the approval of SIPO. Violation of this rule will result in the refusal of granting a corresponding application in China. Such regulations may force foreign companies to adjust their first filing strategies.

Evaluating prior art

One major change in the proposed revision to the Patent Law relates to the concept of prior art. The Patent Law has a mixed standard in evaluating what constitutes prior art for an invention or a utility model. Prior art includes information in publications worldwide, public usage in China, and other means of disclosure in China. The proposed revision to the Patent Law creates an absolute standard by extending the public usage and other means of disclosure to the worldwide category. This means the standard for the novelty and inventiveness of an invention or a utility model filed in China is raised.

Design patent applications

The proposed revision to the Patent Law makes a big difference to design patent applications. First, the law stipulates that a design patent should be obviously different from the combination of prior design features, raising the standard for design patent applications; second, planar printing designs which identify two-dimensional prints, limited to patterns or colours or both, will no longer be patentable; third, similar designs of the same product can be filed as a single application; fourth, the offer for sale of a design patent will be infringing act; fifth, a brief description of the design patent is required and this may be employed to construe pictures or photos of the design; sixth, when bringings an infringement action to court or requesting administrative authority to handle a dispute, the design patentee should present a search report made by SIPO.

Unpatentable subject matter

Besides planar printing designs, the proposed revision to the Patent Law stipulates that inventions which rely on genetic resources, the acquisition or use of which violates regulations, are unpatentable. Meanwhile, the proposed revision restricts non-patentability of diagnostic methods, medical treatment or surgery on humans or animals.