CPA Senior Attorneys Invited by Quality Brands Protection Committee to Participate in Online Meeting on Revision of Patent Law Implementing Regulations and Patent Examination Guidelines

Recently, China Patent Agent (H.K.) Ltd. (CPA) deputy general manager Mr. Xiong Yanfeng and Legal Affairs Department deputy manager Mr. Ke Ke were invited to attend an online meeting on the revision of the Implementing Regulations of the Patent Law and the Guidelines for Patent Examination. The meeting, organised by the Patent and Innovation Committee (PIC) under the Quality Brands Protection Committee of China Association of Enterprises with Foreign Investment (QBPC) and moderated by PIC vice chair Mr. Deng Jun, was participated by 60-plus representatives from QBPC's member companies.

CPA deputy general manager Mr. Xiong in his presentation elaborated on what are worthy of note in the revised Guidelines for Patent Examination regarding key procedural issues, patent term adjustment (PTA), and reexamination and invalidation procedures. Drawing from his practical experience and citing actual cases, Mr. Xiong expounded on some new considerations that needed to be incorporated into the response and amendment strategies in the invalidation procedure. In response to the newly added provisions related to incorporation by reference and addition, correction or restoration of priority claim, Mr. Xiong delved into the strategies that may be adopted by the applicants, taking into account enterprises' specific needs. Regarding PTA, Mr. Xiong explained, in comparison with existing international practice, the eligibility conditions for PTA and matters to note in applying for PTA as well as PTA-related services that can be provided by patent firms. As for the issue of service inventions and relevant reward and remuneration, Mr. Xiong shared his views towards some frequently asked questions on the basis of the Implementing Regulations of the Patent Law, the Law on Promoting the Transformation of Scientific and Technological Achievements, and precedents of the Supreme People's Court.

CPA deputy department manager Mr. Ke Ke's presentation focused on the amendments related to patent administrative protection and the newly introduced open licensing system. Regarding administrative protection, he overviewed the work scope of the patent administration departments according to the amended provisions, and the role played by the patent administration departments as distinguished from the patent enforcement departments. Citing some past cases, Mr. Ke also discussed with the participating company representatives the features of administrative protection in comparison with judicial protection. As regards open licensing system, he introduced its nature, basic features, relevant procedures as well as execution and recordation of licensing agreements, reduction and exemption of patent annuities, linkage of open licensing with other procedures, and remedies of disputes over licensing matters. Mr. Ke also discussed the Chinese open licensing system in parallel with its counterparts of the UK and Germany, and analysed the possible benefits and limitations of open licensing in practice based on the information from exchanges with foreign firms.

During the interactive session, the participants raised questions including double jeopardy in invalidation procedure, common issues in joint development between enterprises and universities through entrustment, collaboration or labour dispatch, reward and remuneration in international research collaboration, and changes in inventorship, which were all explained in detail by the guest speakers.