Transitional Measures for the Implementation of the Revised Patent Law and Its Implementing Regulations

Proclamation No.78

Issued by the Patent Office of the People's Republic of China on 25 June, 2001

According to the Presidential Degree (No.36) of the People's Republic of China, the decision on the revision of the Patent Law, adopted on 25 August, 2000 at the 17th Session of the Standing Committee of the 9th National People's Congress, shall enter into force on 1 July, 2001. Accordingly, the revised Implementing Regulations of the Patent Law shall also enter into force on the same date.

For any patent application filed on or after 1 July, 2001 and the patent right granted on the basis of the application, the provisions of the revised Patent Law and its Implementing Regulations will apply; for any patent application filed before 1 July, 2001 and the patent right granted on the basis of the application, the provisions of the revised Patent Law and its Implementing Regulations will also apply on or after 1 July, 2001, except otherwise provided for.

The provisions for the transition between the pre-revised and revised Patent Law and their Implementing Regulations are as follows:

1. The State Intellectual Property Office (SIPO) will continue to examine and make decisions on, in accordance with the provisions of the former Patent Law (1992) and its Implementing Regulations, any revocation request received before 1 July, 2001, where no examination decision is made. The reexamination decisions, made on or after 1 July, 2001 by the Patent Reexamination Board (PRB) on the requests for revocation of the patents for utility model and design, remain final.

From 1 July, 2001, anyone may file a request for invalidation of a patent right against which SIPO receives a request for revocation before 1 July, 2001 and no examination decision is made thereon.

2. The reexamination decisions on the applications for patent for utility model or design, or examination decisions on the requests for invalidating the patents for utility model or design, made before 1 July, 2001 by SIPO and received on or after 1 July, 2001 by applicants or interested parties, are to remain final.

3. With regard to the request, received before 1 July, 2001 by PRB and filed in dissatisfaction of SIPO's decision to reject an application for patent for invention, for the reexamination of the decision, where the decision is made in accordance with the provisions of the former Patent Law and its Implementing Regulations other than Rule 53 of the Implementing Regulations of the former Patent Law (1992), and no reexamination decision is made before 1 July, 2001 by PRB, PRB shall continue to examine the request and make a decision in accordance with the provisions of the former Patent Law (1992) and its Implementing Regulations.

4. With regard to the request, received before 1 July, 2001 by PRB and filed in dissatisfaction of SIPO's decision to reject an application for patent for utility model, for the reexamination of the decision, where the decision is made in accordance with the provisions of Rule 2, Paragraph 2, of the Implementing Regulations of the former Patent Law and the Proclamation No.27 of the former Chinese Patent Office, and no reexamination decision is made before 1 July, 2001 by PRB, PRB shall continue to examine the request and make a decision according to the provisions of Rule 2, Paragraph 2, of the Implementing Regulations of the former Patent Law and the Proclamation No.27 of the former Chinese Patent Office.

With regard to the request for invalidating a patent for utility model, received before 1 July, 2001 by PRB, where the request is filed in accordance with the provisions of Rule 2, Paragraph 2, of the Implementing Regulations of the former Patent Law and the Proclamation No.27 of the former Chinese Patent Office, and no examination decision is made on the request before 1 July, 2001 by PRB, PRB shall continue to examine the request and make a decision according to the provisions of Rule 2, Paragraph 2, of the Implementing Regulations of the former Patent Law and the Proclamation No.27 of the former Chinese Patent Office.

5. With regard to the request, received before 1 July, 2001 by PRB and filed in dissatisfaction of SIPO's decision to reject an application for patent for design, for the reexamination of the decision, where the decision is made in accordance with the provisions of Article 5 of the Patent Law on the ground that the application is in conflict with any legitimate prior right of any other person, and no reexamination decision is made before 1 July, 2001 by PRB, PRB may examine the request and make a decision according to the provisions of Article 23 of the revised Patent Law.
With regard to the request, received before 1 July, 2001 by PRB, for invalidating a patent for design, which is filed in accordance with the provisions of Article 5 of the Patent Law on the ground that the patent right is in conflict with any legitimate prior rights of any other person, and no reexamination decision was made before 1 July, 2001 by PRB, PRB may examine the request and make a decision according to the provisions of Article 23 of the revised Patent Law.

6. Where a patent certificate is issued by SIPO before 1 July, 2001 and published by SIPO on or after 1 July, 2001, the patent right shall enter into force on the date of the issuance of the patent certificate.

7. Where an application for patent for invention is filed before 1 July, 2001, for which a notification for entry into the procedure for examination as to the substance is sent by SIPO before 1 July, 2001, the applicant may still amend its or his application on its or his own initiative when replying to the first office action for the examination as to the substance of SIPO on or after 1 July, 2001; where the notification for entry into the procedure for examination as to the substance is sent by SIPO after 1 July, 2001, the amendment made on or after 1 July, 2001 by the applicant on its or his own initiative shall be in accordance with the provisions of Rule 51 of the Implementing Regulations of the revised Patent Law.

Where an application for patent for utility model or design is filed before 1 July, 2001, for which the grant of the patent right is not announced by SIPO before 1 July, 2001, the applicant may still amend it on its or his own initiative within three months after the filing date.

8. Where an applicant or patentee receives, within two months before 1 July, 2001, a notification from SIPO that its or his patent application shall be deemed to have been withdrawn, or its or his patent shall be deemed to have ceased in violation of Rule 88 of the Implementing Regulations of the former Patent Law (1992), the applicant or patentee may, on or after 1 July, 2001, go through the procedure for the restoration of right with two months from receipt of the notification in accordance with Rule 7 of the Implementing Regulations of the revised Patent Law.

9. Where an applicant for patent for invention pays the maintenance fee of the application before 1 July, 2001, SIPO shall not refund the fee; where the applicant for patent for invention continues to pay the maintenance fee of the application on or after 1 July, 2001 and no patent right is eventually granted to the application, it or he may request for a refund.

Where an applicant for patent for invention should have paid the maintenance fee of the application and the surcharge thereof but fails to do so before 1 July, 2001, and no notification of withdrawal of the application is sent by SIPO before 1 July, 2001, the provision that such an application shall be deemed to have been withdrawn as set forth in Rule 88 of the Implementing Regulations of the former Patent Law shall no longer apply on or after 1 July, 2001.

10. Where SIPO notifies, before 1 July, 2001, the patentee of paying the surcharge in accordance with Rule 88 of the Implementing Regulations of the former Patent Law, the patentee shall pay the full amount as specified in the notification.

Where a patentee has paid the surcharge before 1 July, 2001 in accordance with Rule 88 of the Implementing Regulations of the former Patent Law, and, on or after 1 July, 2001, requests for a refund of a part of the paid surcharge in accordance with Rule 96 of the Implementing Regulations of the revised Patent Law, SIPO shall not refund the fee.

These Measures shall enter into force on 1 July, 2001.