- Reading Article 11 of the Detailed Rules for the Implementation of the New Patent Law.
Article 20 of the New Patent Law is a wake-up call for breach of good faith in the process of patent application and patent implementation, while Article 11 of the New Rules provides a tooth for Article 20 of the New Patent Law.Author |Shao Wei, Beijing Yongxin Intellectual Property Law Firm.
Edit |Bruce.
Article 11 was added to the Implementing Rules of the New Patent Law promulgated on December 21, 2023, namely, ".The principle of good faith shall be followed in applying for a patent. All types of patent applications shall be based on real inventions and creations, and shall not be falsified. In addition, the new rules also specify this provision as the specific legal basis for preliminary examination, substantive examination and patent invalidation in the requirements for preliminary examination under Article 50, the requirements for substantive examination under Article 59 and the grounds for invalidation under Article 69, respectively. For the first time, these provisions introduce the specific requirements of the principle of good faith into the patent grant and confirmation procedures, demonstrating China's determination to crack down on violations of good faith in patent applications. In addition, with respect to administrative liability for violation of Article 11 of the New Rules, Article 100 of the New Rules provides that, ".If the applicant or patentee violates the provisions of Article 11 of these Rules, the department responsible for patent enforcement at or above the county level shall give a warning and may impose a fine of not more than 100,000 yuan. It can be seen that for a patent application that violates Rule 11, the applicant will not only be unable to obtain a patent right, but even if the patent right is obtained, it will be invalidated, and may also be fined up to RMB 100,000.
Although Article 11 of the new Rules specifically refines the principle of good faith as follows:It is based on real inventions and creations and must not be falsifiedBut it's still not specific enough. Therefore, in Article 3 of the Provisions on Regulating Patent Applications, a departmental regulation published on the same day, the State Intellectual Property Office clearly stipulates that the following specific acts are manifestations of violation of Article 11 of the new Rules:
1) The content of the invention-creation of multiple patent applications is obviously the same, or the substance is formed by a simple combination of different invention-creation features and elements;
2) The patent application is fabricated, forged, or altered in the content of the invention-creation, experimental data, or technical effects, or plagiarized, simply replaced, or pieced together the prior art or prior design, or other similar circumstances;
3) The invention-creation content of the patent application is mainly randomly generated by the use of computer technology;
4) The invention-creation of the patent application is clearly inconsistent with technical improvement or common sense of design, or is inferior, piled up, or unnecessarily narrows the scope of protection;
5) The applicant submits multiple patent applications without actual R&D activities and cannot give a reasonable explanation;
6) Filing multiple patent applications that are substantially related to a specific entity, individual, or address in bad faith, scattered, sequentially or in different places;
7) Transferring or receiving the right to apply for a patent for an improper purpose, or falsely changing the inventor or designer;
8) Other abnormal patent application behaviors that violate the principle of good faith and disrupt the normal order of patent work.
At the same time, the preliminary and substantive examination parts of the new Review Guidelines published on the same day directly cited the above-mentioned regulations as the basis for review. Since the application of the law in the invalidation procedure applies to the provisions in the preliminary and substantive examination unless otherwise specified, the above-mentioned eight acts will also become the specific facts and reasons for the CNIPA to determine that the patent is invalidated due to the violation of Article 11 of the New Rules in the invalidation procedure.
Judging from the eight acts listed in the above-mentioned regulations, whether it is the "obvious" sameness and "simple" combination in the first act, or the forgery, plagiarism and patchwork in the second act, or the "bad faith" in the sixth act Due to the ambiguity of the subjective judgment, it is believed that all invalidation petitioners will take Article 11 of the new Rules as the reason for invalidation after January 20, 2024, and the State Intellectual Property Office will also have to examine this reason for invalidation, resulting in new workload pressure.
In particular, it should be noted that, in accordance with the provisions of Part IV, Chapter III of the new Review Guidelines, "If the acquisition of a patent right clearly violates the principle of good faith, the collegial panel may introduce the grounds for invalidation under Article 11 of the Detailed Rules for the Implementation of the Patent Law for examination. This provision makes the content of Rule 11 part of the ex officio examination by the State Intellectual Property Office. In other words, in an invalidation proceeding, even if the applicant for invalidation does not cite Article 11 of the new Rules as the reason for the invalidation request, the CNIPA may introduce this legal provision ex officio and make a decision on the invalidation of the patent right accordingly. It should also be noted that the new examination guidelines have a special requirement for initiating ex officio examination procedures before the CNIPA, which is that there must be a "manifest" violation of the provisions of the new Rule 11. It should be pointed out that when initiating an ex officio examination of this ground, whether it is "obvious" is obviously a subjective judgment, and considering the penalty provisions of Article 100 of the new Rules, it is unlikely that the State Intellectual Property Office will not easily initiate the ex officio examination procedure under Article 11 of the New Rules.
In addition, the new examination guidelines do not provide detailed provisions on the allocation of the burden of proof based on Article 11 as a ground for invalidation in invalidation proceedings. As mentioned above, since the application of Rule 11 of the new Rules requires a large number of judgments on the subjective state, the allocation of the burden of proof will have a greater impact on the decision-making of the result. This will only be known through the implementation of the new regulations after the new review guidelines come into effect on January 20, 2024.
It is also important to note that although Article 20 of the Patent Law, which came into force on June 1, 2021, first introduced the principle of good faith, i.e., ".The principle of good faith shall be followed in applying for a patent and exercising a patent right. The patent right shall not be abused to harm the public interest or the legitimate rights and interests of othersHowever, the above-mentioned legal provisions are not the specific legal basis in the patent grant and confirmation procedures, and Article 11 of the corresponding new rules is the specific legal basis for the grant and confirmation of patent rights. In particular, Article 11 of the New Rules emphasizes that violations of good faith that occur at the "patent application stage" are specifically prohibited. Therefore, for a patent right, only the breach of good faith before and during the patent application may lead to the invalidation of the patent right, and the breach of good faith after the grant of the patent does not violate the provisions of Article 11 of the New Rules, so the patent cannot be declared invalid through the patent invalidation procedure of the State Intellectual Property Office.
The new rules will come into force on January 20, 2024. In accordance with the provisions of Articles 1 and 9 of the "Transitional Measures for the Implementation of the Revised Patent Law and its Implementation Rules" promulgated on December 21, 2023, "From January 20, 2024, if the petitioner files a request for invalidation of the patent right granted by the patent administration department on the grounds that it does not comply with the provisions of Article 11 of the Detailed Rules for the Implementation of the Revised Patent Law, the Patent Administration Department shall apply the provisions of Article 69 of the Detailed Rules for the Implementation of the Revised Patent Law for examination. "Thus, starting from January 20, 2024, a person requesting invalidation may file a request for invalidation under Rule 11 against all patent rights, regardless of when the patent right was granted.
In short, Article 20 of the New Patent Law is a wake-up call for violations of good faith in the process of patent application and patent implementation, while Article 11 of the New Rules provides a tooth for Article 20 of the New Patent Law. However, due to the many factors that are difficult to quantify in the judgment of violation of the principle of good faith, it is foreseeable that the CNIPA will be very cautious in the application of Article 11 of the new Rules at the stage of patent invalidation. In any case, it is hoped that through the implementation of the new implementation rules and the new examination guidelines, the untrustworthy behavior in the patent application process can be more effectively stopped, and a more powerful and fair mechanism will be provided for improving the level of patent protection and improving the quality of patents in China.
(This article only represents the author's point of view and does not represent the position of intellectual property).
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