The fourth amendment to the Patent Law establishes the patent open licensing system, and the implementation rules of the new Patent Law, which will come into effect on January 20, 2024, contain specific provisions on patent open licensing.
After obtaining a patent right, the patentee can generally realize the economic value of the patent by implementing it on its own, licensing others to implement it, transferring or pledging it, and making litigation claims.
However, in practice, it is not easy to achieve patent licensing, and there are three main difficulties:
First, there is asymmetry in supply and demand information
The demander usually has no way of knowing which patents are willing to be licensed, how much the patent license is, whether there are licensing restrictions, or even how to contact the patentee.
Second, the negotiation cost is high and the process is complex
Unlike ordinary tangible goods, each patent is unique and does not have a uniform, clear value, which leads to patent licensing involving more complex technical, legal and business knowledge.
Licensees need to be financially costly, time-consuming, and risk-free from a failed transaction. As a result, the high cost of negotiation and the complexity of the process have led to many people being intimidated by patent licensing.
Third, the public's awareness of patents is weak
As mentioned in the article "The Truth and Falsity of Patent Operation", the current public awareness of patents is weak, and most patent licenses can only be obtained through litigation. In patent licensing, many people hear the question, "Why did I give you a license fee?" What services do you offer? ”
In the case of weak public awareness of patents and the country's discouragement of patent litigation, it is almost impossible to promote patent licensing and make people take the initiative to pay patent license fees. It's against human nature.
In order to promote the transformation and application of patents, the patent open licensing system was naturally introduced.
Although the patent open licensing system cannot solve the problem of "weak public awareness of patents", it can at least promote the docking of patent licensing information, improve the efficiency of patent licensing negotiations, and reduce the transaction risk of patent licensing.
According to statistics, among the 150 countries or regions in the world that have established patent systems, more than 20 countries or regions, including the United Kingdom, France, Germany, Russia, Spain, Italy, and Singapore, have established open licensing systems, while the United States, Japan, and South Korea have not established open licensing systems.
The core logic of patent open licensing is basically the same in various countries:
The patentee takes the lead in clarifying the patent royalties and standards, and on this basis, issues a contract offer to the unspecified patent demander, and through the announcement of the patent administration department, the patent demander only needs to notify the patentee in writing on the premise of promising the relevant conditions of the patentee to quickly obtain the patent use authority.
To put it bluntly:
The patentee sets the standard of the patent license fee by itself and leaves ***, and then the CNIPA announces it to the public; If someone wishes to use the patent, it is sufficient to notify the patentee in writing.
No face-to-face, no negotiation between the two parties, no need to sign a contract; Moreover, the CNIPA provides credibility protection and there is no transaction risk, so what are you worried about?
In order to encourage patentees to carry out open licensing, the state will give preferential treatment for the reduction of annual fees for open licensed patents after filing.
For many enterprises, patents are a sleeping wealth and a heavy burden, and some enterprises have to pay hundreds of millions of yuan a year for patent maintenance.
However, if there is an annual fee waiver, this fee will be saved.
In the past two years, the landlord's family has no surplus food, and they are all shouting to reduce costs and increase efficiency, and if you can save a dollar, you can save a dollar.
However, the detailed rules for the implementation of the Patent Law stipulate that the patentee shall not make an open license declaration or obtain a reduction or exemption of patent annuity fees during the implementation period of the open license by providing false materials or concealing facts.
But there seems to be a loophole in this regard:
For example, a company may transfer its intellectual property to another company, and then license the patent to the original company through a patent open license, saving annual fees.
The above operation should theoretically be legal. There are even more controversial operations, such as:
The two companies negotiated to open patent licenses to each other or unilaterally, so as to help one save the annual fee or the two companies save the annual fee at the same time.
It should be noted that although there are no clear preventive and regulatory measures, the patent law has stipulated the principle of good faith, so you should not defy the law.
Patents that can be openly licensed
The subject matter of the patent open license statement shall be the invention patent, utility model patent or design patent that has been authorized and published.
A patent evaluation report is required for a utility model or design, and the patent evaluation report does not consider that the utility model or design patent does not meet the conditions for granting a patent.
In addition, these patents are not open licensable:
The patent right is within the validity period of the exclusive or exclusive license, the annual fee has not been paid in accordance with the regulations, the patent right has become invalid, the patent right has been pledged, and the relevant procedures have been suspended without the consent of the pledgee, or a dispute has arisen over the ownership of the patent right or the people's court has ruled to take preservation measures against the patent right.
2. Submit a patent open license statement
The patent open license statement shall indicate: the patent number, the name of the patentee, the method and standard of payment of patent royalties, the term of the patent license, the patentee's commitment to meet the conditions of the open license declaration, and other matters that need to be clarified.
In addition, a brief explanation of the basis and manner in which the royalties are calculated should be submitted, generally no more than 2,000 words.
The patent license fee shall be paid on the basis of the brief description, and shall be paid at a fixed fee standard, which shall generally not be higher than 20 million yuan. If the commission is paid in the form of a royalty fee, the net sales commission is generally not higher than 20%, and the profit amount commission is generally not higher than 40%.
Examination, notification, registration, announcement
If the patent open license statement meets the requirements after examination, the State Intellectual Property Office shall approve the announcement and issue a notice of approval of the patent open license statement; If the provisions are not met, the State Intellectual Property Office shall not make an announcement and issue a notice of non-publication of the patent open license statement.
The relevant matters of the patent open license statement shall be registered in the patent register and published in the patent gazette, including: main classification number, patent number, open license declaration number, patentee, invention name, application date, grant announcement date, patent license royalty payment method and standard, patent license term, patentee *** open license statement effective date, etc.
4. The patent open license implementation contract takes effect
Where any unit or individual notifies the patentee in writing that it is willing to exploit its open license patent and pays the royalties in accordance with the announcement, the patent open license exploitation contract shall take effect, except as otherwise provided by the relevant laws and administrative regulations.
Where an entity or individual within the territory of China implements an open patent license, foreigners, foreign enterprises or other foreign organizations are willing to implement it, they shall comply with the relevant provisions of the Regulations of the People's Republic of China on the Administration of Technology Import and Export and the Administrative Measures for the Registration of Technology Import and Export Contracts, and Hong Kong, Macao and Taiwan shall also refer to these provisions.
Filing of patent open license implementation contracts
The patentee or licensee shall, after the open license contract takes effect, go through the filing formalities with the State Intellectual Property Office with a written document that can prove that the open license has been reached.
The formalities for the filing of patent open license exploitation contracts shall be carried out with reference to the Measures for the Filing of Patent Exploitation License Contracts.
However, it should be noted that whether or not to record does not affect the effectiveness of the patent open license exploitation contract. However, whether or not to record will affect the reduction or exemption of annual fees during the implementation period of the patent open license.
Reduction of annual fees during the exploitation period of patent open licenses
The exploitation period of an open patent license refers to the period from the effective date of the patent open license exploitation contract to the expiration of the patent license.
If the claimant files the patent open license exploitation contract, it shall be deemed that the patentee has submitted a request for reduction of the patent annuity fee at the same time, and then enjoys the reduction or exemption of the annual fee.
Many patentees handle itThe purpose of open patent licensing is to reduce or reduce annual fees, so the number of patent license filings will definitely rise to a new level.
If the patentee is not satisfied with the decision on whether to reduce the annual fee during the implementation period of the patent open license, he may make a statement to the State Intellectual Property Office, consult or apply for administrative reconsideration.
7.Withdrawal of patent open license declarations
If the patentee withdraws the declaration of open license, it shall submit a request for withdrawal of the declaration of open license, and the withdrawal of the declaration of open license shall not be accompanied by any conditions.
If the request for withdrawal of the open license statement is reviewed and meets the requirements, the State Intellectual Property Office shall approve the announcement of the withdrawal of the open license statement; If the requirements are not met, the State Intellectual Property Office shall not announce the withdrawal of the open license statement and explain the reasons to the patentee. The withdrawal of the open license declaration shall take effect from the date of publication.
On January 23, 2024, the first batch of patentees to eat crabs has arrived. The details are as follows:
It can be seen that most patentees are still in the exploration stage of what kind of fee standard should be for open patent licensing.
In addition to the statistics of open license patents on January 23, the author has made statistics on all subsequent open license patents, and there are currently five main types:
Fixed price:Most patentees adopt the method, from 10,000 to 1 million, which is generally not low.
Entrance Fee + Commission:The entry fee is generally not low, and the commission is 25%, 20%, 2 yuan.
Pay in installments:Such as East China University of Science and Technology, the number is small.
Free License:Kuaishou, Alipay, Ele.me, Bilibili.
Royalty:There is only one, the single project of Shanghai Sancai Science and Technology Development Co., Ltd. has a usable area of 8 yuan according to the drawings
With the implementation of the patent open licensing system, it is believed that the patentee can formulate the best pricing strategy according to the actual situation of the potential licensee.
Elon Musk has publicly claimed that Tesla is free to open all patents, here is a reminder to Musk: hurry up and apply for an open license for Tesla's patents, in the licensing fee, remember to write a free license like "Kuaishou, Alipay, Eleme, Bilibili".
As a foreign product, it is unknown whether the patent open licensing system can be integrated into China's existing patent system. However, it is undeniable that the patent open licensing system allows the patentee to open the patent to anyone who wishes to use it in the form of a clear price, which will definitely play a positive role in the transformation and application of the patent.
Shimizu Intellectual Property, focusing on high-quality patent services, focuses on mining intellectual wealth for enterprises.