On 15 December, 2020, China National Intellectual Property Administration (CNIPA) released the first batch of guiding cases for administrative enforcement of intellectual property rights. One out of five guiding cases involves patent protection. The focus of Guiding Case No. 4 will be discussed below.
Guiding Case No. 4: Administrative Mediation
This case involved the determination of the starting date of the "temporary protection".
China adopts an “early publication and delayed examination” system for invention patent applications. After the patent application is published, it is possible for a third party to know and implement the content of the invention. IP protection between publication and granting is called “temporary protection”.
According to the relevant provisions of the Patent Law, applicants have the right to request payment of royalties for the temporary protection of invention patents, but they do not have the right to request suspension of the implementation of the invention during the period of temporary protection.
Thus, implementations of the invention during the period of the temporary protection are not prohibited by China's Patent Law.
According to the relevant provisions of the "Guidelines for Patent Examination", after the patent right is granted, the administrative department of patents can, per the request of the parties, mediate disputes over the use of the invention without paying appropriate fees after the publication but before granting of the invention patent application.
In August of 2015, Wang, the patentee of an invention patent, requests local CNIPA office (Handan City, Hebei Province) to mediate a dispute regarding royalties during the temporary protection against a financial institution. The local CNIPA office noted that the patent in question is a divisional patent. The parent patent and the divisional patent are both granted and valid. During the mediation process, the two parties have different opinions on whether the publication date of the parent patent or the divisional patent should be used as the starting date of the temporary protection period.
The local CNIPA office confirmed that the temporary protection should be determined by the publication date of the divisional and parent patents, whichever is the earliest. In this case, the publication date of the parent patent is earlier than the publication date of the divisional patent, and therefore, the publication date of the parent application shall be regarded as the starting date of the temporary protection.
Other guiding cases involve trademarks and layout designs of integrated circuits. Following the release of the first batch of guidance cases for administrative enforcement of intellectual property rights, CNIPA will strengthen the publicity and interpretation of cases, improve the working mechanism of guiding cases, guide all relevant intellectual property law enforcement agencies to use guiding cases as important references for handling similar cases, unify enforcement standards, and continuously improve intellectual property administrative protection.
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