China’s fourth amendment of Patent Law comes into effect as of 1 June 2021, yet the new Implementation Rules of the Patent Law, which is still under revision, is not likely to be on the horizon any time soon. To help the stakeholders navigate the landscape during the transition period, the CNIPA promulgates the “Interim Measures on Disposition of Examination-related Matters in Implementing the Revised Patent Law” on 24 May 2021, which becomes effective simultaneously with the new Patent Law.

According to the Interim Measures, as of 1 June 2021, some newly amended provisions of the Patent Law will be implemented: Articles 20.1 and 25.1(5) will be applied by the CNIPA in the preliminary examination, substantial examination and review procedure; the time limit for submitting priority documents in Articles 30 will become applicable to the patent application filed after 1 June 2021; and Article 66 may be cited as the legal basis to request patent evaluation report from the CNIPA.

Applications or requests filed on the basis of other provisions including Articles 2(4), 24(1), 29.2, 42.2, 42.3 and 50 may be accepted but they will NOT be examined until the new Implementation Rules take effects. The practice has raised some concern among practitioners because it may put patentee in a conundrum. Patentee postponing his filings until the promulgation of the Implementation Rules will lose the advantage of filing on an earlier application date. Nevertheless, without detailed rules to follow, application documents filed prior to the promulgation of the Implementation Rules may be found to be defective on a later date if it fails to comply with the finalized Implementation Rules, which could trigger amendment or rejection, thus put the patentee in a disadvantageous position. Some practitioners therefore advocate that as a compromise, the CNIPA adopts a less stringent examination criteria for those early applications to protect the interests of the right holders. It remains to be seen how these issues are to be addressed in the new Implementation Rules and Examination Guidelines.

Authored by: Rui Wang